There is a lot of buzz around Google and their attempt to trademark the word glass.
The Huffington Post and The Daily Mail wrote articles on Google having trouble getting their trademark approved which for the most part they were sourcing the Wall Street Journal article who seemed to be the first to talk about the trouble Google was having with their trademark for glass.
Jacob Gersham wrote on the Wall Street Journal:
At least one company is opposing Google’s bid. In December, Border Stylo, LLC, the developer of a browser extension called “Write on Glass,” filed a notice of opposition against Google. Last month, Google struck back, filing a petition to cancel Border Stylo’s trademark. Lawyers for Border Stylo couldn’t be reached for comment.
Google doesn’t necessarily need a federal registration to call its product “Glass” or enforce a trademark on the word, says Josh Gerben, a trademark attorney in Washington, D.C. who doesn’t represent either company. But if Google’s trademark effort falls short, he told Law Blog, it could make it harder for the company to protect the trademark or sue for infringement.
Gerben said that while Google could avoid a trademark fight by just referring to its device as “Google Glass,” a single, simple word has obvious marketing advantages.
“They just want to call it ‘Glass.’ They don’t want to have to call it ‘Google Glass,’” he said.
Yes Writeon.Glass is available currently.
Megan Garber over at The Atlantic covered a story on the stalled trademark as well, she also took a look at other technology firms and their trademark quests.
Here, with that in mind, is an extremely partial list of tech trademarks both attempted and won.
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Apple has tried to trademark the word “startup.”
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Apple and Amazon have faced off in court over the use of the term “app store.”
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Amazon has successfully filed for trademarks for the terms “Prime,” “I want one!,” “of note,” “look inside,” and “Earth’s biggest.”
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Facebook has tried to trademark the word “book.”
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Facebook has successfully trademarked “F,” “Face,” “FB,” and “Wall.” Oh, and also “Facepile.”
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Instagram has tried to stop other apps from using “Insta,” “Gram,” and “IG.”
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Microsoft has trademarked the word “haunt.”
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Microsoft has tried to trademark the term “age of mythology” and the words “natural” and “rare.”
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Samsung has filed for trademarks on the terms “dark screen” and “finger scanner.”
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Skype has trademarked the word “silk.”
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Twitter has trademarked the word “tweet.”
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Zynga has trademarked the term “with friends”—and has sued other companies over their use of it.
Casey Johnston wrote a piece on Ars Technica on the 1928 pages of documentation Google supplied to support their case.
Google responded on March 20 to the examiner’s objections with a 1,928-page document demonstrating the variations of “Glass” trademarks that customers are currently able to distinguish between. Google also submitted the argument that “the sophistication of the purchasers of goods offered under the respective marks weight against finding a likelihood of confusion”—essentially, people who would buy Google Glass are too smart to not know what “Glass” refers to.
To defend against the “merely descriptive” point, Google cites a number of cases where the USPTO has granted trademarks to products that are not made of the materials they reference—for instance, Platinum Micro, Inc., a computer hardware company.
After the arguments, the document’s remaining 1,903 pages consist of various articles that use the terms “Google Glass” and “Glass.”
Needless to say most of the commenters on every story felt that Google stepped over the line. The general consensus being that they have a trademark for Google Glass and that should be sufficient.
There is a .glass extension out there and Mike has already pointed out how some people have regged some names that are just begging for URS or UDRP.
CheapGlass.com
GlassClub.com
GlassCo.com
DiscountGlass.com
I might have a gripe as well (or Thanks ) 🙂
Facebook has NOT registered the word “face” as a trademark in the US.
That story was misreported last year, and I’ve been meaning to point out that the blogs all botched that story.
They had bought a pending applicaton that was filed on a foreign-priority and intent-to-use basis from a UK company. The foreign priority claim got screwed when they changed the goods and services, and they kept the ITU basis and got to allowance.
When the ITU application was allowed, there was this bloggasm of “OMG They trademarked ‘face'” stories.
The thing is, they never used the mark, nor did they submit a specimen of use to the USPTO which is a requirement for advancing an allowed ITU application to registration.
The deadline for that reached the point of no return a few months ago.
Nobody covered it.
So, Mike, here’s an exclusive for your blog – all that crap about Facebook registering “face” as a trademark in the United States is just that: bullshit.
Read it:
Word Mark FACE
Goods and Services (ABANDONED) IC 038. US 100 101 104. G & S: Telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78980756
Filing Date December 1, 2005
Current Basis 1B
Original Filing Basis 1B;44D
Published for Opposition May 25, 2010
Owner (APPLICANT) FACEBOOK, INC. CORPORATION DELAWARE 1601 Willow Road Menlo Park CALIFORNIA 94025
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Anne Peck
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator DEAD
Abandonment Date December 30, 2013
I traced the sequence of how all the blogs got it wrong, and while the original Ars Technica story was updated to say that unspecified “addtional paperwork” was needed, or words to that effect, the update made it seem as if it was just some sort of formality. But not even the correction followed any of the re-tellings of the story, and the belief persists to this day – including by this blog – that they have a US registration for “face”.
They don’t and, like I said, this comment on this blog is the only place you’ll find that (aside from actually looking at the USPTO record).
It’s dead, Jim.
And, further to that comment…. I think they realized they were screwed when they (a) amended the g&s to conform with the UK registration that ultimately issued to the UK assignor, but then (b) dropped the foreign priority claim; leaving behind a somewhat questionable claim to have been “assigned” an intent-to-use application without having acquired the original applicant itself.
You see, while applications can be filed on an intent-to-use basis, you can’t really assign an unrealized intent, absent meeting some other conditions, that weren’t met in this application.
That’s why the “Original Filing Basis” says 1B and 44D. The 1B means “intent to use” and the 44D means “foreign priority application”. But the foreign applicant – actually a series of companies which ran faceparty.co.uk – appears to have retained ownership of the UK application. Realizing that they couldn’t credibly claim to own the foreign priority document, Facebook dropped the 44D basis – which actually rendered moot the conforming amendment to that application as-issued. But, by the same token, it must have eventually hit them that all they had left was an amended intent-to-use application, which is also problematic, assigned under conditions that don’t appear to have met the requirements for assignment of an intent-to-use application.
It’s kind of unfortunate, because at least one “top shelf” firm was involved in fucking up that application.
I agree
And John I recall talk about FB applying for BOOK in the same capacity – but because FACE failed – I suppose no application for BOOK was ever made.
And here I sit still with a domain I reserved for faith based social networking years before FACEBOOK was even on the planet – FaithBook.com with a poorly written demand letter Facebook sent me over 5 years ago they never followed up on – but it certainly stopped my plans for the domain.
I hadn’t heard that story, Brian, but I’m not seeing one.
It appears to me,very simply,that the world IS GOING MAD.Everyone, starting in the US, has gone sueing mad!It also seems as a company grows so does it’s ego.This trade marking of simple everyday words even being allowed is crazy,time to leave planet Earth for me,and find somewhere quiet to live!
CLOUDYGLASSES.COM
so google will come for my A+ss
John –
I do not think an application was every made – just talk & chatter out of amazement that they would even try to register FACE
@BrianWick
I believe FB acquired the Face Recognition tech company, Face.com, which was launched in Silicon by the Sea, Tel Aviv.
As far as Border Stylo, the Company with the purported “Glass-Family of Marks”, I don’t know the particulars of its “Glass” marks. But I do know the Company is well-funded (maybe a Series C round) and it demonstrated some great touchscreen technology at the Conferences in Barcelona & Vegas.
Brian, it wasn’t Facebook that filed the application for “Face”. It was originally filed by a UK outfit called CIS Internet Ltd. trading as “faceparty.com”. From the looks of things, Facebook acquired the application, or at least was formally assigned the application, and then deep-sized it. I say was “at least formally assigned” because not only were they essentially attempting to buy an ITU independent of the filing entity, but the document they filed is not itself an unqualified assignment.
And, Steven, it Facebook did acquire the company which was using the domain name face.com, but it does not appear that Facebook acquired the domain name face.com itself. That facial recognition company never did own the domain name, as a stroll through the WHOIS history demonstrates.
John,
You’re right-o. Bit of a head-scratcher, but I suppose the Tel Aviv Company must have licensed the domain face.com and sold only the technology to FB. What a strategic and ingenious move – leasing the name and using the premium domain as the Company moniker (if that was the case).
thanks—