Last year, I got all twisted up in a blog about a non-glazing company’s attempt to trademark a fairly common glazing industry term, thinking that none of us could ever refer to or use that term (“glass”) ever again. Within a couple of hours of the blog being posted, I received an email from a trademark and patent attorney pointing out the error of my ways. I came to understand that it’s not quite as complex or conspiratorial as I thought it was. Every once in a while I see the same sort of thing, and all I think is, “it’s déjà vu all over again.”
A couple years ago, Google introduced Google “Glass,” connecting the wearer to the internet through a pair of eyeglasses. Google Glass hasn’t done so well in its marketplace, although glass appears (for the time being) to be doing fine in our world. If you go to the Google Glass web site these days, you get one of those pages that implies there’s more to come, but nothing’s available yet.
I initially thought none of us would be able to use the name glass again if Google was granted the trademark. The attorney pointed out that like the name “Apple,” now more closely associated with phones and tablets than with fruit, the use of “glass” as a term can still be used by others, but just not as a trademark for a product. The grocery store still sells McIntosh apples (the fruit, not the computer) without fear of Apple suing them for using the term “apples” or “McIntosh” for in-store labels, coupon ads, etc. Makes sense, right?
In another case along these line, Kellogg’s was so concerned about protecting the sanctity of its mascot for Fruit Loops cereal, Toucan Sam, that in 1995, it sent a protest letter to a band called the Toucans, a four-member group playing Afro-Caribbean music at weddings and festivals. Kellogg’s buried the band in legal papers, but the band didn’t change their name.
According to the US Patent and Trademark Office (USPTO), “A trademark identifies goods or services as being from a particular source.” For example, when mentioning Corvette, you think Chevy. Solarban, you think PPG, not anyone else. When you mention Silpruf, anyone with any experience in using sealant knows you’re talking about Momentive, you’re not talking about the manufacturer of 795, Dow Corning.
Using common industry terms and trademarking them is a bit confusing to me. (ref: “Generic Terms Are Not – and Can Never Be – Trademarks”). For example, if one were to attempt to trademark “curtain wall,” thus precluding its use by anyone else in the industry, would such a general name necessarily make customers think of that company? And, one would think that common industry terms cut so wide a swath that surely the USPTO wouldn’t grant protection of the term.
The legal implications of registering and using a specific trademark almost always requires using a lawyer to assist in the process, to avoid the pitfalls, which seems to be a cost worth bearing.
And if you don’t use an attorney in that process, I’m reminded of an old anecdote: first thing Monday morning your receptionist calls, saying there are two parties waiting for you:
60 minutes is here with a camera crew, and they’re asking to talk to you.
Some attorney is on the phone, and he wants 15 minutes of your time, but he didn’t say what it was about.
Which one do you chose? Meanwhile, I’ll go back to my day job in the glass curtain wall and building envelope biz. Sure is fun and exciting, isn’t it?
Happy Birthday, USA! 239 Never looked so good; here’s to many more!