Google had attempted to trademark, “Glass,” a term related to their head-mounted smart device. Despite Google’s high hopes to take ownership of the word, the USPTO saw the glass as half empty. According to the initial refusal issued by the USPTO to Google, the trademark examiner raised two main concerns. First, that that the word lacked distinctiveness and second, that it was likely to cause consumer confusion.
1. Lacking Distinctiveness
To obtain the trademark, Google had to show that “Glass” would be considered distinctive enough to distinguish the product, from other goods or services. But how is this determined?
Trademark examiners take into account the word in relation to the product and reference the spectrum of distinctiveness to make this decision. (See Below)
Placement on this spectrum would determine the eligibility for and the scope of trademark protection. This spectrum ranges from fanciful terms being the most distinctive and generic terms being the least distinctive. Whether or not “Glass” would be determined distinctive and, in turn, eligible to trademark was up to the trademark examiners discretion.
According to the initial refusal issued by the USPTO to Google, the examiner had suggested that “Glass” — even with its distinctive typeface — is “merely descriptive. In other words, “Glass” was considered to merely describe the product, not distinguish it.
2. Consumer Confusion
“Glass,” being such a common term, it isn’t a surprise that Google is not the first company to apply to trademark the word. As Mashable pointed out, there were various conflicting software/hardware marks all ready on file that used the word “Glass” including: “glass,” “looking glass,” “iGlass,” “smartglass” and “teleglass.” A quick trademark search at Trademarkia.com would also show a complete list of filed trademarks that incorporate the term.
Clearly, the trademark application for “Glass” was similar to many other computer software/hardware trademarks. According to the initial refusal issued by the USPTO to Google, the trademark examiner determined that these similarities would cause too great a risk of consumer confusion. In conjunction with this determination, the trademark application was held back by the USPTO.