In a recent letter to the USPTO, Google has signaled that it will continue its fight to register the word “Glass” as a trademark for its innovative “Google Glass” product, the wearable electronic smart glasses.
This move follows the USPTO’s September 2013 letter in which a trademark examiner raised two separate objections to Google’s initial attempt at registration. First, the examiner contended that the mark would create a likelihood of confusion as to the source of Google’s product. The examiner concluded that Google’s “Glass” would “create the same overall commercial impression” as similar, previously registered marks for computer hardware and mobile devices.
Second, the examiner found that the word “Glass” is “merely descriptive” of “a feature or material component” of Google’s product. 15 U.S.C. § 1052(e)(1). Under federal trademark law, “merely descriptive” marks cannot be registered unless they have acquired distinctiveness in the marketplace as an identifier that the trademark owner is the source of the goods.
In response to the USPTO’s objections, on March 20, 2014, Google’s counsel submitted a massive 1,928-page letter contesting the examiner’s conclusions. Google filled nearly 1,900 pages of its letter with excerpts of news articles about Google Glass, arguing that there is no likelihood of confusion as to source because of the link between the producer, “Google,” and the product, “Glass,” that these articles have created in the minds of consumers.
Moreover, Google contended that its use of “Glass” is not, in fact, descriptive. The company argued that because Google Glass is made of titanium and plastic components, and “do[es] not consist of glass at all,” the word “Glass” is not merely descriptive of a material component of its product. Thus, Google contended, its stylized use of “Glass” does not function to “inform potential consumers as to the nature, function or use” of its product, but is rather distinctive based on the mark’s acquired secondary meaning.
The “Glass” registration fight is a textbook example of the frequent internal struggles between companies’ marketing and legal teams. While the catchy, one-word “Glass” mark might be easier to sell to consumers, registration of the mark with the USPTO is far from certain. Of course, Google need not register its mark to use it. The mark could still be protected under federal law as an unregistered trademark. If its application is ultimately denied, however, Google would miss out on the considerable advantages of registration, such as nationwide constructive use and notice, the presumption at trial that the mark is valid, and the ability to record the mark with US Customs, to help fend off and seize counterfeits trying to enter into the US—a problem that seems highly likely to emerge if Google’s product is successful in the marketplace.