Google Inc. was able to get the term ‘Google Glass’ trademarked successfully when it started developing these spectacles. Last year, the company had also submitted another trademark request for just a single word ‘Glass’, which would be displayed in the same futuristic font used for the full term in its marketing campaign. However, the company’s bid is being held up by the US Patent and Trademark Office. Last fall, a trademark examiner wrote a letter to the company and raised two main objections to their application. One of these concerns was that the trademark boasted a similarity with other pending or existing trademarks of computer software that also contain the word ‘Glass’.
This would give rise to the risk of consumer confusion. It was also suggested by the examiner that even with the distinctive formatting, ‘Glass’ would remain a ‘merely descriptive’ term. This would create an issue because trademark protection is not granted to generic terms under US federal law. For instance, the term ‘shoe’ could not be trademarked by a company if they are selling shoes. A Google spokesman said that the company takes the routine steps like others for registering and protecting its trademarks. A limited number of these wearable computer devices have been sold by the company up till now, but a date hasn’t been announced as yet for retail sales.
Katie Kraject and Anne Peck, the trademark attorneys of the search engine giant wrote back to the examiner of the trademark office two weeks ago. In defense of the application, they attached a 1928-page letter. 1900 pages of this whole letter are simply articles written on Google Glass. The attorneys did not agree with the statement that consumers would be confused because of the company’s proposed trademark because the Glass device was garnering plenty of media and policy attention and has continued to do so in the past few years.
The attorneys also disputed the ‘descriptive’ point made by the examiner, mentioning in their letter that the display and frame components of Google Glass are not made with glass at all. Rather than glass, plastic and titanium has been used for making the device. It was also asserted by the attorneys that simply the term ‘glass’ was not sufficient for informing potential customers about the use, function and nature of the product that Google will sell to them. Google’s bid is being opposed by at least one company.
A notice of opposition was filed against Google in December by the developer of a browser extension. Border Stylo LLC’s product is called ‘Write on Glass’. Google struck back last month by filing a petition for canceling the trademark of the company. No comment was made by the company at this action of Google. A federal registration isn’t necessarily needed by Google if it wants to call its product ‘Glass’ and neither is it necessary for it to get a trademark according to a trademark attorney who doesn’t represent the company. But, the company could find it difficult to protect its own trademark from infringement if its bid is rejected.