Has Tech Trademarking Reached a Ridiculous New Low?

Last week, reports surfaced that Google’s ongoing attempt to trademark the word “glass”—as in Google Glass—had crashed headfirst into a roadblock that came in the form of the US Patent and Trademark Office.

The problem for the trademark people with the word “glass” is that a), there are a number of other requests to trademark “glass” in the works and b), Google’s request was angled in such a way that “glass” was far too generic a word to be trademark-able.

That reasoning makes sense to me, but I figured that for Google to attempt such a feat, there surely would be some possibility of success. So, I called Robin Feldman, a legal scholar who specializes in intellectual property, and talked with her about the wild logic of trademarks.

Much to my dismay, I discovered that trying to trademark a word like “glass” isn’t all that ludicrous—and in fact, there are numerous other examples of tech-related trademarks just as utterly insane.

According to Feldman, the main theme in any trademark discussion is this: “Trademarks prevent consumer confusion about the source [of a product], and protect the misappropriation of goodwill.” The first part is pretty clear, but that second part, in English, means that the government doesn’t think it’s fair to piggyback on all that hard work a company has exerted—or not—into building up a solid brand name. To put it another way, “goodwill” is the reason Facebook is trying to pay the monstrous sum of $19 billion for Whatsapp.

Feldman also pointed out that any trademarks granted are “bounded” by the government’s need to preserve both competition and free speech. For example, she told me that it’s not possible to trademark a word that’s essential to a product's description. The classic instance of that would be the word “car.” From the sounds of things, Google’s “glass” trademark falls firmly into that category.

But, Google clearly isn’t the only company attempting to trademark seemingly ludicrous  terminology—and the technology industry as a whole has made (and been granted) some fairly absurd sounding claims.

In 2010, Facebook, which holds dozens of trademarks on any words you can think of having to do with the company, such as “like,” asked for and was granted permission by the Patent and Trademark office for a trademark on the word “face”. And according to Wired, the social media giant has more recently been suing people over using the word “book” as part of website names.

Another interesting example is Harley Davidson’s request to trademark the sound of a revving engine. Yup, while it sounds totally unreasonable—the request was denied eventually—Feldman told me that both sounds and colors can be trademarked, pointing out that Metro Goldwyn Mayer has succeeded in trademarking its famous lion roar.

More recently, PNC Financial Services attempted to and succeeded in grabbing the trademark for “virtual wallet”—subsequently threatening a reporter at the San Francisco Chronicle over it’s alleged “misuse.” As the Chronicle pointed out, virtual wallet appeared more than 700 times in the press up until 2007, and likely hundreds of times since. The paper also printed “virtual wallet” dozens of times in the story just for the sake of doing so: “virtual wallet, virtual wallet, virtual wallet, virtual wallet.”

And of course there was a war of sorts between Apple and Amazon over the words “app store,” which eventually got resolved, kind of. Apple actually managed to obtain a trademark on the words “app store” and after a rollicking legal battle with Amazon over its use, eventually decided to settle (and agree to not pursue legal action for Amazon using “app store”). Apple, the name of which is itself trademarked, helpfully lists its numerous trademarks, including “New York” and “Chicago” (both names of fonts).

There are numerous other (less interesting) examples of the questionable use of trademarks by the corporate giants of the world, including a lawsuit Paris Hilton (ugh) won against Hallmark for using her trademarked phrase “That’s Hot!” on one of its cards.

Overall, it looks like by and large the reasoning behind many of the trademark claims revolves around that enduring backbone of corporate logic: profit. For instance, in Google’s case, the attempt to do so almost certainly did, as the company likely wants to eventually call its hate-inspiring gadget simply “Glass” not “Google Glass.” But, for other companies, as in the “virtual wallet” trademark, it’s often more difficult to figure out whether a trademark is really necessary and justified.