Google’s GLASS Trademark Application Rejected
There have been a lot of stories going around lately regarding Google’s attempt to register the word GLASS with the United States Patent and Trademark Office (USPTO). Let’s take a look at the record and see where they stand. This will be an interesting illustration of some of the many complications that can arise with respect to a trademark application.
On September 7, 2012, Google applied to register the mark GOOGLE GLASS in connection with the following goods:
Computer hardware; computer peripherals; wearable computer peripherals; computer hardware for remotely accessing and transmitting data; computer peripherals for remotely accessing and transmitting data; computer peripherals for mobile devices for remotely accessing and transmitting data, namely, peripherals worn on the head for mobile devices for remotely accessing and transmitting data; computer hardware for displaying data and video; computer peripherals for displaying data and video; computer peripherals for mobile devices for displaying data and video, namely, peripherals worn on the head for mobile devices for displaying data and video; downloadable computer software, namely, downloadable mobile application for setting up, configuring, and controlling wearable computer hardware and wearable computer peripherals
That application was initially approved by the USPTO, but has been opposed by a company named Border Stylo (they’ll come up again later). Google, in response, petitioned to cancel one of Border Stylo’s trademark registrations. Information about that proceeding can be found here.
A few months earlier, on June 26, 2012, Google had applied to register the mark GLASS for a slightly different set of goods:
computer software for setting up, configuring, and controlling wearable computer hardware; computer hardware; computer peripherals; wearable computer peripherals; peripherals for mobile devices; wearable peripherals for mobile devices; computer hardware for remotely accessing and transmitting data; computer peripherals for remotely accessing and transmitting data; peripherals for mobile devices for remotely accessing and transmitting data; computer hardware for displaying data and video; computer peripherals for displaying data and video; peripherals for mobile devices for displaying data and video
Finally, on July 11, 2013, Google applied to register the mark GLASS as a design mark (logo) – the design can be seen above – for “Computer software for setting up, configuring, and controlling wearable computer hardware; wearable computer hardware; wearable computer peripherals.”
So we have the original GLASS application from 2012, the GOOGLE GLASS application (discussed above), and the design/logo application for GLASS in a distinct font.
The application for the logo mark received an Office Action (USPTO rejection letter) based on several different issues, including likelihood of confusion with prior registrations that include the word “glass” or variations thereof, as well as a determination that the mark is “merely descriptive.”
As a faithful reader of my blog, you’re familiar with the trademark descriptiveness issue. But let’s just suppose for a moment that you’re not a faithful reader of my blog – if so, here’s a review (from a 2011 post in which I discussed Apple’s application to register the mark MULTI-TOUCH):
Descriptiveness is a common issue in trademark law. A descriptive term, a term that is used to describe the functions, characteristics, size, or components of a product, will typically be denied registration on the USPTO‘s Principal Register of Trademarks (I will get into the Principal Register and its lesser sibling, the Supplemental Register, in a future blog post). This is because descriptive terms usually fail to perform the most basic function of trademarks: identifying the source of a product or service and distinguishing it from the products or services of other companies.
The test for descriptiveness is whether a term immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. In other words, if consumers would associate the term with a feature or characteristic of the good or service, the term is descriptive. These may seem like esoteric legal points, but in this case, it’s a fairly common-sense idea. Ask yourself if the proposed trademark, or part of the trademark, could be considered to describe the good or service that you’re providing. If so, it’s descriptive. Why does this matter?
The rationale behind prohibiting descriptive terms from being protected as trademarks is that we should allow competitors to use those terms to describe their products or services when they are marketing them to the public. The public would not be able to make a well-informed decision in selecting a particular product or service if the necessary terms to describe a product or service could not be used.
The Office Action for the GLASS design application stated, “[i]n this case, the mark GLASS would be understood as describing a feature of some the goods, namely, that some of the goods will incorporate display screens and/or lenses that are or will be made of, inter alia, glass.”
Google submitted a brief, user-friendly 1,928-page response to this Office Action. Here’s your Moment of Irony™ for the day: because it was submitted in paper form (due to its length), Google’s response is not searchable. I’ve gone through it (just the relevant bits, of course, not all 1,928 pages), but if you feel like perusing it yourself, the link is here.
As part of their response, Google stated that the “goods are not primarily or significantly composed of the material glass and the frame and display components of the Glass device do not consist of glass at all.”
Fair enough. I think the USPTO Examining Attorney missed the key issue here anyway. The product takes the form of glasses – the things that you wear on your face to enhance your vision or for appearance purposes. It’s certainly possible that products that consumers refer to as “glasses” may not always be made of glass at all – some lenses may be plastic or some type of polymer, for example. But they are glasses nonetheless. Google’s brand name GLASS creates an unavoidable association with traditional glasses. Their product is worn on your face – exactly where you’d wear traditional glasses – and it provides visual information; in a sense, enhancing your vision by adding to what you are able to see.
I believe Google’s GLASS is therefore merely descriptive because it’s simply a singular version of the common term for this type of product – glasses. Yes, Google Glass is more technologically advanced than my Ray-Bans, but nonetheless, the commercial impression is similar. And just as you can’t avoid a trademark issue by pluralizing a singular word, you Google shouldn’t be able to avoid an issue by singularizing (is that even a word?) the word “glasses.”
The USPTO has yet to respond to that aspect Google’s response, because the application – along with the 2013 application for GLASS – was suspended due to (in part) yet another issue – USPTO applications can be based on registrations in foreign countries, and the GLASS applications were both based on registrations in the Kingdom of Tonga. I’m sure the 103,000 Tongan subjects are one of Google’s biggest potential markets, right?
So the GLASS applications were suspended pending Google’s provision of proof of the Tongan registrations…and due to conflicts with two other pending applications, LOOKING GLASS for “Computer software for data analysis, which utilizes various analytic methods to allow tracking and predictive modeling of specific outcomes relevant to specific, user-defined fields” and SMARTGLASS for “computer software for allowing communication and interaction between phones, mobile devices, televisions, video game consoles, media players and audiovisual devices” – the latter application has since registered, so that’s another issue.
And finally, as if this isn’t all confusing enough, both GLASS applications have been tied up in the proceedings with the aforementioned Border Stylo, who, according to Google’s filings, shouldn’t have standing because they allegedly abandoned their marks which include the word “glass.”
My guess is that Google will see how far they can push these various other parties and eventually just buy them out in order to clear the path forward. However, that won’t cure the fundamentally-descriptive nature of the GLASS family of trademarks.
The moral of the story is: don’t select a trademark that so closely describes the goods you’re providing unless you’re patient, willing to jump through many legal hoops, and, most importantly, have Google’s checkbook. According to their most recent filings, Google has $57.53 billion in cash on hand. So they’re going to be OK – don’t let your tears for poor unfortunate Google streak your fancy new Google Glass…glasses?
