Legal Dissection Of Google’s Efforts To Trademark ‘Glass’

A couple of days ago, The US Patents and Trademarks Office rejected Google’s application for registering Glass as their own trademark. Why?

Last year, Google tried to protect the ownership for their revolutionary head wearable device, by initiating an application in which they requested to own the word “Glass” as a trademark.

Even though Google already has a registered trademark for “Google Glass”, they want to register another trademark for the simple word “glass” on the reason that many people already refer to it calling it simply “Glass”. In this case, the trademark would also give a referral in case of bad functionality.

Many believe that Google’s request is not funded, considering that there are a lot of products which contain the word glass in their naming. After all, it’s a simple, common word. In the 2002 court case, between Arsenal and Reed, it was mentioned that a trademark is created in order to give a strong hold on the origin of the product, that cannot be confused with another, therefore, the first product to be distinguished from a pile of similar products with different origins.

For instance, Border Stylo, a company that developed recently an application for Chrome, named Write on Glass is completely against this process of trademarking the word “Glass”, considering that such a decision would infringe the usage of this word in their name. And they’re probably not the only company in this situation, either.

The main argument in this dispute would be that both of them own trademarks that include the word “glass”. As a response to Border Stylo’s claims and oppositions, Google requested the company to prove their trademark, but since they haven’t replied anymore, the giant search company now claims that they don’t own a trademark for any “glass” substitute name as these rights have been ceased back in 2012 to a company named Factory Holding.

However, if you think about it, none of these companies should be granted the right to register common words as their own. After all, intellectual property is a state granted monopoly, which gives strong rights to one company or individual while depriving others from them. Some of the cynics would say that a brand name and color is valuable for the owner and has no significant benefit for society.

In this case, the State would need a justifiable basis to take action, but what if the protection rights these companies request have no real basis behind?

Considering the arguments rose by both parties in this case, we are inclined to believe that this trademark war isn’t anymore just for protecting intellectual rights, but more a mark of property. We believe that there should be a more obvious line between intellectual property and marketing developments or brand naming. And most of all, what is the role of registering a descriptive word like “glass” and how can companies put property on them?

The point is that under law, registering common names or words as trademarks is generally refused. For instance, the naming UltraBook for a laptop could be accepted, while “light” would be refused, for the reason that it is merely descriptive.

But to this argument, Google responded that there is no actual glass used in the product, and so their application could not be rejected on being a mere description of the device.

Indeed, it wouldn’t fit in this category, considering that “merely descriptive marks” are products or services that are somehow described by this word. And no trademark rights are allowed for merely descriptive brands or marks.

But, descriptive marks could become distinct when they serve the purpose of a secondary understanding. Meaning that the naming could refer to one of the functions of a product, by which people recognize it for. And as soon as this is proved, the company could go further to creating a trademark. As far as we know, this can be done easily through heavyweight marketing and publicity or through long-term usage of that word as a description of main characteristic of the device. For instance, we have brands like “Apple”, Digital or IBM, which have acquired that secondary meaning we were telling you about.

We get closer to the area of suggestive trademarks, which normally indicate characteristics, quality or specifics of the environment they operate in, or services those instruments could provide. However, this kind of naming or concepts can be left at the interpretation of the consumer so that he could connect the name with his favorite or most used feature of the device.

However, a suggestive trademark could only work in certain domains and only if strong enough to produce an impact in the consumer’s mind, and make him associate the brand name to the service or product itself.

It is very hard to find a suggestive mark or brand name that could compete or impact the consumer at least the same as the descriptive marks. When put under the highlight, each and every one of them should somehow express one of the services capabilities which people are recognizing the device for. But suggestive marks also need to be understood and perceived easily by the people interested in their services. For instance, we have brand names such as Silicon Graphics, a computer graphic company, the well-known Netscape, Blu-Ray and Microsoft.

Google’s argument is also relying on a suggestive mark naming and has already sent 2,000 pages of articles supporting that people are now referring to their device simply Glass and that the device has received secondary meaning.