Legal Analysis of the Google Glass Trademark Dispute

Mark Leiser: I am a PhD Candidate in Cyber Law at the University of Strathclyde in Glasgow. I have written submissions for the Leveson Inquiry into the culture and ethics of the media and for the Scottish Parliament on the use of social media during trials. My PhD is supervised by Professor Andrew Murray at the London School of Economics and focuses on the effectiveness of cyber-regulation. My research and interests revolve around main areas of Internet law and policy including internet governance & regulation, democracy, social media, privacy, and intellectual property. My PhD research focuses on developing a system of modelling to measure the effectiveness and legitimacy of Internet Regulation. I write in a personal capacity.

Google has had its application to register the trademark 'Glass' rejected by the US Patents and Trademarks Office (USPTO).

The application made last year for the word, 'glass' in an identifiable futuristic font, seeks to protect the considerable investment Google has invested in its wearable technology.

The company has already successfully registered the trademark 'Google Glass' but wants to refer to the product as simply 'Glass'.

The trademark serves as a badge of origin or serves to act as a bad of quality or functionality.

A key judgement that explains “trade origin” comes from the 2002 case of Arsenal v Reed: “The essential function of a trademark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.”

One company, Border Stylo, that developed an App for Chrome called, 'Write on Glass' has lodged an opposition against the mark – presumably there are numerous companies that want to prevent that monopoly over the word, 'Glass', probably the basis of the dispute.

The dispute arises because both companies allege rights in families of 'Glass-formative' marks and that by registering Google 'Glass' Mark, Border Stylo’s rights in its marks will be infringed. Google has challenged Border Stylo’s alleged trademark rights in the first place.

Google alleges that Border Stylo abandoned the 'Glass' mark, the 'Write on Glass' mark, and any other formative marks because, Google alleges, Border Stylo assigned the rights to the trade mark back in 2012 to another company called Factory Holding

As a result, Google claims the question about whether the trademark is confusingly similar to the 'Glass' mark falls flat.

On the one hand Intellectual property rights are a state sanctioned legal monopoly, a privilege granting strong rights and taking away from others. For the cynics, they argue that the brand is only valuable to the owner, but without any real social benefit.

Furthermore, any state intervention needs justifying. In other words, the scope of protection should match the basis for protection. When protection is granted, there are only a handful of reasons to do so. What if this was not the case? What if the argument was not over assignation?

The case raises significant tensions between two competing interests and how they play out along this axis: the mark as a communicative vehicle or the mark as property? To what extent should trademark law recognise ‘brands’ and other developments in marketing? What role does registration play in the balance of interests? And because 'Glass' is a descriptive word, how do companies like Apple and Google get trademarks for common words?

The pursuers in the case argue that 'Glass' is “merely descriptive” and should be refused trademark protection. Descriptive words are generally refused trademarks under law. One could get trademark protection for the term 'UltraBook' for a light laptop, but one couldn’t get trademark protection for the word, 'Light' for the same product. It is "merely descriptive".

Google has responded by arguing (quite rightly) that there is no glass in the product they are trying to trademark. How can a product that contains no glass have a prohibited trademark on “descriptive” grounds?

Descriptive marks (or more properly, "merely descriptive marks") are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or services. No trademark rights are granted to merely descriptive marks.

However, it is possible for descriptive marks to "become distinctive" by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this "second meaning" (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity.

Words like Apple, IBM and digital all have acquired secondary meaning.

Suggestive marks are marks that suggest a quality or characteristic of the goods and services. A suggestive trademark tends to indicate the environment, quality, or a characteristic of the products or services in relation to which it is used, but does not describe the specific characteristic, and requires a mind's eye on the part of the consumer to identify the characteristic.

Despite the fact that suggestive marks are not as strong as whimsical or subjective marks, they are far more common due to the intrinsic marketing advantage of tying a trade mark to the product in a customer's mind.

Suggestive marks are often thought-provoking to say the least as one has to determine how they are distinct from descriptive marks. Both are intended to denote the goods and services under interrogation. Suggestive marks require some resourcefulness, understanding, or perception to reach a conclusion as to the nature of the goods.

Descriptive marks allow one to reach that conclusion without such imagination, thought or perception. Putting this distinction into practice clearly is one of the most difficult and disputed areas of trademark law.

Blu-Ray (high capacity digital storage); Microsoft (suggestive of software for microcomputers); Netscape (software which calls on one to perceive the "landscape" of the Internet) and Silicon Graphics (graphic oriented computers) would all be considered suggestive marks.

Considering that Google has sent the USPTO nearly 2,000 pages of articles to further their application, it looks like Google will be arguing that 'Glass' has acquired secondary meaning. In trademark litigation, courts are most frequently asked to decide between suggestive and descriptive marks on the one hand, and between descriptive and generic marks on the other. This is because suggestive marks, like fanciful and arbitrary marks, are presumed to be entitled to trademark protection, while descriptive marks are entitled to protection if they have become known as representing the producer of the goods, and generic marks can never receive protection.

'Glass' has indeed been one of the most talked about and discussed products yet to be released to the open market yet. And we haven’t even mentioned the privacy implications...

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