Snap was hoping it had made enough of a spectacle of its smart glasses that it could claim a trademark for their name: SPECTACLES. So far, though, the United States Patent and Trademark Office isn’t seeing eye-to-eye with them.
Ok. That’s the end of the puns. Probably.
But Snap’s new lawsuit against the USPTO does offer some insight into trademark law, particularly the kinds of brand names that law does and doesn’t protect. Snap is learning the hard way that if your product name is generic or if it merely is descriptive of your product, you’re going to have a hard time getting a registered trademark.
Five or six years ago, Snap – the company behind Snapchat – began selling glasses with built-in cameras that could send images to an app on a user’s phone. They christened their smart glasses “Spectacles” and filed an application for a trademark. The USPTO rejected the application because the term “spectacle” is generic. At best, the USPTO determined the word might be descriptive but still wasn’t entitled to trademark protection because there was no evidence consumers associated the word with Snap’s glasses. Snap was insistent, though, and asked the USPTO’s Trademark Trial and Appeals Board to reverse the decision. But in a November 2021 ruling, the TTAB agreed “Spectacles” couldn’t be trademarked, and now Snap has asked a California federal court to overrule the USPTO.
Snap faces an uphill battle here because it’s up against a core principle of trademark law: The purpose of a trademark is to protect consumers’ association of a particular word, phrase, or logo with a particular product or service. A generic word can’t serve that function, so, as the USPTO’s website bluntly puts it, “Generic trademarks aren’t even trademarks. They’re merely the common, everyday name for your goods or services. As such, they do not indicate source and cannot function as trademarks.”
A company that wants to sell eyeglasses, then, can’t expect to get a trademark for the word “eyeglasses.” And that, the USPTO ruled, is basically what Snap tried to pull off with “spectacles.” As the TTAB explained its opinion, “The ultimate test for determining whether a term is generic is its primary significance to the relevant public,” and the term “spectacles” means “glasses” to the public. The fact that Snap’s glasses happen to be smart glasses (or at least glasses with a camera) didn’t change that analysis because they aren’t the only smart glasses – or even the only smart glasses referred to as “spectacles” – on the market.
Snap might be saved if it could have persuaded the TTAB its use of “spectacles” was descriptive rather than generic. Descriptive terms can be trademarks – but they don’t get that protection easily. And the TTAB concluded that even if “spectacles” were a descriptive term, Snap didn’t prove that it was entitled to trademark protection.
The problem for Snap is that if it wants to secure a registration for a descriptive trademark, it has to prove the word “spectacles” has acquired a secondary meaning, so that “in the minds of the public, the primary significance” of the word is Snap’s smart glasses. It didn’t. While it was able to come with a number of magazine and online articles discussing its smart spectacles, Snap never was able to draw a line between those articles and consumers associating “spectacles” with its product. Indeed, it wasn’t able to prove consumers are particularly aware of its glasses at all.
The lesson here is that picking a common term as your product’s brand name is risky. If you want a trademark you can protect, choose carefully. The more arbitrary the word you pick, the more fanciful – and the less obvious – the better it will identify your brand and the easier it will be to protect.