Why Can't Google Register "Glass" as a Trademark

Posted by Jeanine Gagliardi on Thu, 04/10/2014 - 04:00

Google’s recent difficulty registering “Glass” as a trademark for its Google Glass product is a good reminder of what to consider when selecting a name. Google Glass is a computer that is wearable like eyeglasses. Google applied to register “Glass,” in a stylized font, as a trademark for the product. The U.S. Patent and Trademark Office rejected the application because, among other reasons, “Glass” is “merely descriptive.”

To serve as a trademark, a name must be distinctive, or capable of identifying the source of a particular good or service. To determine their distinctiveness, names are grouped into four categories based on their relationship with the underlying product or service.

“Descriptive” is one of those categories. Descriptive terms merely describe the underlying product or service. They can serve as marks only after the consuming public primarily associates them with a particular producer or provider, rather than the underlying product or service. For example, “Trademark Dispute Lawyer” could not serve as a trademark for a trademark dispute lawyer that is not particularly known by the public.

The remaining three categories of names are:

(1) Generic: terms that describe the general category into which the underlying product or service belongs. Generic terms cannot serve as trademarks.

(2) Fanciful or arbitrary: terms that do not bear a logical relationship to the underlying product or service. Fanciful or arbitrary terms are trademarks as soon as they are used in commerce.

(3) Suggestive: terms that suggest a characteristic of the underlying product or service without actually describing it. Like fanciful or arbitrary terms, suggestive terms are trademarks as soon as they are used in commerce.

When you think of building a brand name for your product or service, take the long view and consider building the value of a creative name that consumers will recognize over time - like "Amazon" for a seemingly inexhaustible source of online goods. If you try to coattail on an intuitively descriptive name - like "Glass" for a pair of glasses - you may have trouble.

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