Written by Matthew G. Miller, Gearhart Law
Google, the Mountain View-based search giant, is preparing for the release of their hotly anticipated new product,Google Glass. Aside from promoting Google Glass through various publicity stunts, Google is also looking to protect their legal rights associated with Google Glass. The company has filed a number of patent applicationspertaining to the technology contained in Google Glass. However, recently Google has turned their eye towards a new realm of protection; federally registered trademarks.
In 2012, Google filed for a trademark on the term “Google Glass” and now the search giant is looking to expand its protection by registering a stylized version of the term “Glass.”
Note that under federal law** (15 U.S.C. §1052(e)(1)) a trademark cannot be registered when it is “merely descriptive” of the goods on which on the mark is being used unless the term obtains what is known as “secondary meaning.” Without this secondary meaning it is impossible for a mark to obtain full trademark protection. Establishing secondary meaning indicates that even though the desired trademark is merely descriptive, the public still identifies the trademark with the goods the mark is intended to identify. An example of this is Kellogg’s All-Bran Cereal. While the mark “All-Bran” describes an aspect of the cereal, the general public thinks of Kellogg’s cereal and no other product or service when hearing or seeing the mark.
Because “glass” is a descriptive term, the United States Trademark Office has rejected Google’s application to register the word. In response to the Trademark Office’s rejection, Google has filed a staggering 1,928 page reply. Granted, the reply is only 24 pages of substance and 1,904 pages of examples of “glass” being used in connection with Google’s product, Google Glass. These additional 1,904 pages of examples are provided in an attempt to show the Trademark Office that the public, upon hearing the term “glass” thinks of their product. If Google can establish this connection, they will have achieved secondary meaning for the term “glass” in connection with Google Glass. In further support of their argument that this trademark should be granted, Google argues that the term “glass” is not descriptive of their product since Google Glass contains only minimal amount of glass, and is actually made up mostly of metal and plastic.
Whether or not Google will prevail in their attempt remains to be seen, but it will certainly be interesting to watch where things go from here…
**In the United States, under common law principles, a party gets protection of their trademark simply by using it. However, registering your mark with the federal government provides many, many benefits.