TECHNOLOGY
Trademarking issues
A pain in the
GLASS
TM?
T
rademarks 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 company’s trademarks
without even realising an
infringement has taken place.
A recent application made by
Google to register a trade mark
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.
The first objection centres on
potential consumer confusion
as a result of 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 which
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
SECTION SPONSOR
TECHNOLOGY_TB36_GoogleGlass.ga.indd 29
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
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.
It is
unsurprising
that many
small
businesses
will fall
foul of other
company’s
trademarks
without even
realising an
infringement
has taken
place.
Contact:
www.dyoung.com
talkbusinessmagazine.co.uk 111
29/08/2014 14:24