Snap Sues USPTO Over Generic Trademark Denied For Being Generic
from the on-spec dept
It’s a point we have to make far more often than we should: trademark law is not designed to allow anyone or any company to simply lock up common language as their own. There are lots of ways the confusion around that expresses itself, but one of the most common concerns generic terms for goods and services. Yes, you can trademark Coca-Cola. No, you cannot trademark “soda.” Yes, you can trademark “Apple” for computers. No, you cannot trademark “apples” for your apple-farming company. See? Not too hard!
For us, at least. For the folks at Snap, however, the point seems to elude them. Snap has a line of augmented reality glasses and has unhelpfully decided to name the product “Spectacles.” When Snap applied for a trademark on the name of the product, the USPTO managed to actually get it right and denied the application over the generic nature of the term.
But rather than slinking away with a sly smile at the failed attempt to get one over on the USPTO, Snap has now sued the USPTO instead.
The USPTO rejected Snap’s trademark application for the name in 2020, finding it trademark-ineligible because it was either generic or descriptive. A USPTO tribunal affirmed the decision later that year. Snap asked the California court in 2022 to force the USPTO to grant the trademark, and said that potential buyers think of “Spectacles” as a Snap brand instead of a generic term for smart glasses.
The USPTO asked the court last year to grant it a win without a trial.
And the court just recently denied the USPTO’s request and is allowing the trial to move forward. Why? I have no real idea. The U.S. Magistrate Judge cited “competing evidence” that needed to be sorted out in an actual trial, but I truly can’t understand what in the world that competing evidence would be. The only specifics in the judge’s order reference surveys and expert testimony as to whether the public associates the term “spectacles” with glasses in general, or with Snap’s product. And I suspect the court is allowing this to go to trial mostly as a procedural result, since the burden at this stage would be on the USPTO to demonstrate that the evidence in the case is one-sided to get a judgement without trial.
And the judge apparently thinks it’s not one-sided enough. So now this goes to trial, where one would hope it ultimately becomes a win for the USPTO.
Filed Under: descriptive, generic, spectacles, trademark, uspto
Companies: snap
Comments on “Snap Sues USPTO Over Generic Trademark Denied For Being Generic”
USPTO Sued Over Snap Judgement
Snap makes a spectacle out of trademark ruling.
In the land of spectacles, I’ve never heard of “Snap,” so there’s no confusion at all for me. This judge decided to punt due to… bad optics?
“Snap” like the dick pic app?
Sounds like a reasonable decision. At this point all claims have to be read in the light most favorable to Snap when deciding whether to grant the USPTO’s motion. It isn’t impossible that a jury might believe Snap’s claims, so the judge pretty much has to deny the motion and let it go to trial. Snap’s not going to win, but the question of whether “spectacles” is more recognizable as a Snap brand or a generic synonym for glasses is a question of fact not law.
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Usually, I use the word ‘glasses’, but I don’t see the word ‘spectacles’ as anything other than an alternative term for the same object. Snap should have gone with ‘Spectacular’. Highly similar to ‘spectacles’, but way more trademarkable.
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If it’s generic, they’re done. If it’s a descriptive them, then they could still get a registration if they can show so-called secondary meaning (i.e. that the term has come to be seen as a Snap brand in the minds of the public).
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Agreed. This is in federal court and the right to a jury trial in federal civil cases is in the Constitution. If there is any evidence to support Snap’s claims then it’s the judge’s responsibility to not weigh the evidence; it has to go to a jury.
Oh snap!
Come on guys, it’s not that hard, AR glasses have a load of possible options. Did these folks even bother to check if “Spectrecles” was trademarked? Boom, glasses that let you see ghostly stuff overlaid on reality. Easy and sufficiently specific to trademark. This is not a difficult concept.
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I like spooktacles.
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Spectrecles sounds like a Roman gladiator.
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More like Greek.
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Yup, ‘Hercules’ -> ‘Heracles’. ‘Spectacles’ -> Spectrecles’.
Judges
Well judges are just lawyers in funny dresses.
In this week’s court case news, water isnt wet, darkness is bright, dead people aren’t dead, the blind can differentiate colors, and a preschooler get held in contempt for calling the judge a dum dum.
to be fair
When is the last time you heard spectacles used as a generic term for glasses? 200 year old books dont count.
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yesterday
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The last time? A couple of months ago in a book written last year. STFU whining about “200-year-old books.”
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“Possibly archaic in your personal experience” != not generic or descriptive.
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Last month.
I suppose it is possible that the judge wants to set a precedent. After the case it over, the USPTO will be able to show that a court has stated that common descriptive words cannot be trademarked, instead of just having to point at the law that says the same thing.
Just computers? What about Apple Records?
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That was a British grant of the word being applied to a company formed by the most famous quartet in the world. The USA simply ratified it as an already existing copyright in another country. Berne convention agreements and all that, you understand.
Which is why Apple Computers had to back down in their suit against the Fab Four over the use of the term ‘Apple’ when referring to anything in the overall ‘music’ field.
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Are you mixing up trademark and copyright? Brand names get trademarks. The Berne Convention is for copyright and makes copyright on a creative work automatically extend to almost all nations. Trademarks have to be registered individually in each country.
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Funny, I didn’t know copyright applied to short ‘works’ such as company names. What have you been taking?
oh come on
OMG. I’m no marketing genius, but why not just go with Snaptacles?
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That’s what I call my dick pics.
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The focus groups preferred testacles.
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That’s what they called the prototype.
Spectacled Bears to file amicus curiae?
or Spectacled Owls? or Spectaled Porpoise?
(the point being that there are more uses of the word than just those things that help you see better, and those uses of the word are what make it, ya know, generic)
When your case/argument is so bad you’ve got me hoping that the USPTO wins in court for once…