The Internet serching giant unveiled its plans to trademark the work “Glass,” but it will definitely take the company much time and effort as gaining rights for this is not the easiest task.
Actually, Google has already been refused by the U.S. Patent and Trademark Office (USPTO,) The Wall Street Journal reports, although it did receive a trademark for the “Google Glass” term.
In a letter to Google, USPTO pointed to two objections, “one related to the fact that the trademark is too similar to existing or pending computer software trademarks that have the word “glass” in it, and one related to the actual word.”
“’Glass’ — even with its distinctive formatting — is ‘merely descriptive.’ Words that simply describe a product don’t have trademark protection under federal law — ‘absent a showing of acquired distinctiveness,’” The Wall Street Journal writes. Thus, for example, a company that makes salsa couldn’t trademark the term “spicy sauce.”
“Google, like many businesses, takes routine steps to protect and register its trademarks,” a Google spokesman said in a statement. The Internet searching giant has already sold a limited number of the wearable computer devices, but a lauch date for retail sales is not known yet.
Trademark attorneys for Google, Anne Peck and Katie Krajeck from Cooley LLP, replied to the state examiner two weeks ago with a 1,928-page letter in defense of the application.
The attorneys are currently discussing whether Google’s move would somehow affect or confuse consumers, especially when taking into consideration all the attention the unusual device has received in the last couple of years.
They also said they can’t agree with the examiner on the “descriptive” point, citing in their message that “the frame and display components of the Glass device do not consist of glass at all,” but are made from titanium and plastic.
The attorneys also said the word “glass” alone does not “inform potential consumers as to the nature, function or use” of the product Google is selling.
At least one company is opposing Google’s bid. A few months ago, Border Stylo, LLC, the developer of a browser extension called “Write on Glass,” filed a notice of opposition against Google’s move to trademark the word.
Last month, the tech company struck back, filing a petition aimed at cancelling Border Stylo’s trademark. Lawyers for Border Stylo couldn’t be reached for comment.
“Google doesn’t necessarily need a federal registration to call its product “Glass” or enforce a trademark on the word”, says Josh Gerben, a trademark attorney in Washington, D.C. who is not involved in the case.
However, he notes, if Google’s trademark effort falls short, it could make it harder for the company to protect the trademark or sue for infringement.
Gerben also admitted that while the Internet company could avoid a trademark fight by just referring to its device as “Google Glass,” a single, simple word has obvious marketing advantages.
“They just want to call it ‘Glass.’ They don’t want to have to call it ‘Google Glass,’” he said.