Snap is suing the US Patent and Trademark Office (USPTO) for its refusal to trademark the word “eyeglasses” for a digital eyeglasses camera device. But the USPTO confirmed that “eyeglasses” is a generic term for smart glasses and that Snap’s version “has not gained distinction”, as required by the brand.
In its complaint filed Wednesday in US District Court in California, Snap claims that the Spectacles name “creates a conflict between the 18th century term for corrective eyeglasses and Snap’s 21st century high-tech smart glasses. SPECTACLES also suggests the purpose of the camera, which is to capture and share scenes of unusual, prominent or amusing (eg, “glasses”) while also encouraging users to make “glasses” for themselves.”
Snap first introduced its camera-equipped Spectacles glasses in 2016 (“a wearable digital video camera housed in a trendy pair of sunglasses,” according to its complaint), which can capture photos and videos while the user is wearing them and connect to the Snap smartphone app. Although sold online and in pop-up vending machines around the world, the first iteration of Spectacles mostly failed with consumers. In its third-quarter 2017 earnings report, Snap said it lost nearly $40 million in nearly 300,000 unsold Spectacles.
In May 2021, Snap CEO Evan Spiegel demonstrated an augmented reality version of the Spectacles, which is so far only available to a small group of selective creators and reviewers of the company. AR glasses are not yet available for purchase by the general public.
Snap’s new complaint assumes there has been enough media coverage of Spectacles, backed by some of its industry awards and marketing including social media, to support its claim that consumers associate the word “glasses” with the Snap brand. Snap first filed a trademark application for Spectacles in September 2016, “for use in connection with wearable computers” and other related uses “between consumer electronics and displays.”
During several round trips with the company since then, the USA desk has confirmed that the word “eyeglasses” sounds “generic in relation to specific merchandise,” that is, camera glasses. Snape continued to appeal the agency’s decision.
In an opinion issued in November 2021, the USPTO’s Trademark and Appeals Board upheld the decision, and asserted that “glasses” was a generic term that applied to all smart glasses, not just the Snap version. Despite the publicity that Spectacles allegedly received from marketing and social media, the board noted in its opinion that “Spectacles’ social media accounts have massive followings, and the number of followers is surprisingly low”, which they did not. Support the company’s argument that there was a high enough level of consumer exposure to Snap’s Spectacles to claim that consumers associated the word with the Snap brand.
In its complaint on Tuesday, Snap’s lawyers argued that “glasses are an old-fashioned term popular in the 18th century,” and that it “is not used much today in the United States,” particularly by Snapchat’s young audience. This indicates that recent use of ‘glasses’ in the United States – particularly among the younger consumer population who are relevant consumers of Snap’s SPECTACLES camera product – is not generally understood to mean eyeglasses, and certainly not a wireless-enabled camcorder product. .”
But the USA’s Board of Appeals said in November that the evidence did not support this argument, and that the word “glasses” still retained its generic meaning, and therefore could not be registered as a trademark. The board noted that Snap has demonstrated in its own marketing that “the shape of the eyeglasses is the feature, function and characteristics of a camera, not only functional but aesthetic.”
Snap’s lawsuit, which identifies the acting director of the USA office, Drew Hirschfield, seeks to overturn the appeals board’s November decision. The company declined to comment on the record for the edge.