A pain in the Glass?

Matthew Dick and Anna Reid of D Young & Co, look at a recent attempt by Google to trademark the word “Glass”, to highlight the issues for businesses trying to trademark a descriptive word

Trademarks can be a tricky business, and some will look to take advantage of the complexity of current laws. Therefore it is unsurprising that many small businesses will fall foul of other companies’ trademarks without even realising an infringement has taken place. A recent application made by Google to register a trademark for the stylized word “Glass” in relation to its wearable smart glasses, has been refused by the US trademark Registry on the basis of a number of objections, which highlight the fine line between acceptable and unacceptable.

glass shattering

The first objection centers on potential consumer confusion as a result of a number of earlier trademarks registered, which include or comprise the word glass (including Smartglass and iGlass). The second objection is based on the view that some of the goods covered by Google’s application may feature glass display screens or lenses. As a result, the mark “Glass” is not capable of registration for such goods because it merely describes a material component of the goods.

In response, Google has filed nearly 2,000 pages of evidence to support its application. Google has pointed out that the product is made of a titanium frame and plastic screen, so the mark is not descriptive. Google has also filed additional evidence, which is intended to show that consumers will associate the mark with Google as a result of the huge publicity that the product has attracted in the US.

Arguably the word ‘glass’ is not descriptive of the specific goods covered by Google’s application (essentially wearable computer hardware and peripherals) and it should be remembered that everyday words can be registered as trademarks for goods/services for which they are not directly descriptive (such as “Coach” for bags and accessories). However, it is possible that the examiner may have been aware that the mark will actually be used in relation to smart glasses and this may have contributed to the objections raised.

In the UK, where Google Glass has received less publicity, the UK Registry accepted Google’s application for the same stylized “Glass” trademark (although this application has since been opposed by a third party). Google’s application to register the plain word glass as a Community Trade Mark (CTM), which covers the whole of the EU, has also successfully passed the initial examination process, although this application is now facing opposition too.

Google will be hoping that the arguments and evidence filed in support of its US application will be sufficient to overcome the objections raised, but its application hangs in the balance.

This case highlights the need to seek advice from a specialist trademark lawyer before seeking to register trademarks that may be deemed to be descriptive.

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