High-Risk Naming: Can Google Trademark “Glass”?
Google, which we’ve held up as an example of both good and bad when it comes to branding, recently applied for a trademark for the word “Glass.” Not Google Glass, just Glass. Not surprisingly, the U.S. Patent and Trademark Office is not going to give in so quickly. Everyday terms, such as glass, are usually not ownable by any one company, especially when they are descriptive of the product or service itself.
Trademarking Generic Terms
Generic terms are typically difficult to trademark, and for good reason. They are undifferentiating and cause confusion in the marketplace. The reason Apple was able to trademark an everyday word was that a word for a fruit does not in any way describe computing hardware. Glass, however, describes the appearance, apparent composition and function of the Google product. (Although, as this Mashable article attests, the product is not actually made of glass)
Trademark attorneys will usually caution a company about attempting to secure a trademark in a crowded field, because of the risk that another party will contest the application. A quick USPTO search turns up 4714 records for ‘glass’ but it is usually protected in combination with other language to mitigate this risk. There are a few exceptions, including Google’s application, an application for an electronic cigarette product, and a swimwear company. Most entries include this language: “no claim is made to the exclusive right to use ‘glass’ apart from the mark as shown.” The Google entry seems to claim slightly broader ownership, stating “The mark consists of the word GLASS in stylized form.” Which means the trademark would cover the word and the unique typestyle in which it is rendered.
Setting a Precedent
If Google prevails, it could set a precedent for ownership of generic, descriptive words. Should Google (or any company) own a generic word that is also descriptive of the product? Why would they want to? In our opinion, Google should want to establish a brand connection to this (self-described) world-changing product, not let it fly away on its own. Nor should Google try to bend the rules of fairness in its favor, which could cause legal headaches and future ill will.