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Gmail Under Trademark Dispute
fbform writes "As reported by this article on InternetNews, when news about Google's IPO broke on March 31, 2004, some companies (Cencourse, Precision Research and ProNet Analytics) made a beeline for the USPTO to get Gmail trademarked in their name, as Google's IPO prospectus said that its unregistered trademarks included Gmail. Google itself was fourth in line, and it was followed by the Gospel Music Association. This might be a very sticky issue because USPTO Trademark Administrator Sharon Marsh says 'The application process is first come, first served. Applications are processed as they're received, and the person second in line will get a refusal of registration from our examiner.' All of which means that between Google's delay in applying for the trademark, the other organizations' attempt at what can only be called cybersquatting, and the USPTO's bureaucracy, Google could well be denied the use of Gmail as a trademark."
(IANALBIPOOTI.) Unless the other parties can demonstrate that they really did have an intent to use to "Gmail" as a trademark before they heard of Google's service and the lack of registration, the fact that Google had already begun to do so (albeit in beta form) gives them a pretty good case to assert. Since they'll also have the benefit of good legal counsel, I'm not too worried about their prospects... it may just take some time.
a quick search of the gospel music place turns up this linko ry_07- 10-03.cfm
http://www.gospelmusic.org/news/GMAil_topst
10 july 03
apparently they've been mailing their Gospel mail (gmail) for several years (supposedly since 1999)
Legally, it's not who registers the trademark first, but who uses the trademark first. It also matters if they are in the same market. It's possible that they could all get the gmail trademark if they are all in completely different markets. For Google to be in trouble, one of these other companies would have had to actually use the gmail name to provide Internet services or email services before Google. If one of the other companies get gmail registered as a trademark, Google can still use gmail, get sued by the other company, and then as a defense, challenge the validity of the other company's registered trademark. I bet Google's attorney's are not worried.
"The struggle itself toward the heights is enough to fill a man's heart. One must imagine Sisyphus happy." Albert Camus,
Google could well be denied the use of Gmail as a trademark
It's not gonna happen. The Gmail trademark is useless to the other companies, because there's already public name recognition with Google. The only reason they're trying to grab it is so they can try and cash in and sell the trademark to Google. It's a form of legalized blackmail...
This article is pretty much devoid of any proper legal analysis. Usually they hunt up a practicing lawyer to offer some consultation on the issues involved, but this article didn't seem to have that. They did have a PTO person say some basic things, but the story does not end there, as any seasoned TM lawyer can tell you.
Yes, trademark REGISTRATION in the U.S. is first come, first served, but trademark rights are ultimately only gained by using the mark in interstate commerce. Getting a trademark registration will get you a PRESUMPTION that you were using on the date of your application filing, but if you go to court, you must ultimately show that you were using the mark in question in interstate commerce.
Further, even the registration process accounts for this requirement. Here's how. Company A files an application for GMAIL on Jan. 31. Google, who had been using their GMAIL mark since Jan. 1, only gets around to filing an application on Feb. 1. Now, when the USPTO gets Google's application, they'll do a search, find Company A's application, and likely suspend Google's application until Company A's application is either registered or rejected (an application can be rejected for any number of reasons).
Now, let's say Company A gets to the point where the USPTO is ready approve their application for registration. Before registration can happen, the mark must go through a process called "publication," where the mark is advertised by the USPTO and third parties have a certain time period to contest registration of the mark. One of the grounds for opposing is earlier use. Google could certainly lodge an opposition and, if they could show that they were using the GMAIL mark earlier than Company A, they would likely prevail.
Even if Google is asleep at the switch, and Company A's mark registers, they can do the equivalent of opposing it after registration through a process called cancellation. Same basic rules, same basic result. If Google was using first, then they will likely prevail.
From the article;
...
IIIR's Gmail is a service for subscribing clients, including securities traders, bankers, hedge fund brokers and retail investors.
"My firm has operated a service of similar name since May 2002, which is also a Web-based e-mail service," Smith said.
Under that criterion, Precision Research would win the trademark, claiming its used Gmail since January 1998. The Gospel Music Association would be next in line, thanks to its having sent members its Gmail e-mail newsletter since 1999.
The surprise isn't how often we make bad choices; the surprise is how seldom they defeat us.
The name of the office is abberviated USPTO for a reason, it stands for United States Patent and Trademark Office. To register national trademarks you have to go through the USPTO. If you only need a regional trademark, you would do it as you said.
Not really, corporate Yahoo! mail is @yahoo-inc.com.
Cencourse: Global Mail
Precision Research: ???
Pronet Analytics: G-Mail technology discussed here
Gospel Music: GMail
"I have a porkchop, you have a porkchop. I have a veal, you have a veal".
Well yes it is standard Venture Capital at work. Some people with no money and an idea want to start a company. They go out and seek funding and in the valley its almost venture capital in one form or another. Unfortunately the price they pay with each round of VC is they lose more and more control of their company and its fate. Each major venture capitalist demands seats on the board and in turn they get boxes in the corporate org chart.
A potential problem is the two guys in the dorm room or the garage had the mojo. All those VC's are just out to make a killing and they cause lots of bad things to happen to good technology and good people like Sergey and Larry. When they are ready to IPO they INEVITABLY tell the founders they have to bring in business people that will command respect on Wall Street so they bring there people in and at that point the founders lose control of their company, they still get rich unless they are really stupid, but they lose their baby.
You don't have to look at the Prospectus to guess where all the Google VC came from, just look at the board and you see all the usual suspects
Sun
Sequoia capital
Kleiner Perkins Caufield & Byers
Intel
Sherpalo I don't recall hearing before but they sound like classic VP.
John Hennessey is in there to cover the Stanford connection. If you don't recognize the name he wrote a classic tome on computer architecture.
You wonder who is really running Google now, Larry and Sergey as it should be, or the sharks that saw an opportunity to make a killing.
@de_machina
Our trademark and patent system in the US is pretty much a joke. It has been a tool for abuse since a lawyer once figured out that it could be used to eliminate competition instead of protecting ideas. First off to trademark something you should have to prove that its yours. And when it comes to patents you should not only have to prove its yours but you should have to use it or lose it.
But the biggest problem for me is the idea of ownership of knowledge. Everything you do and everything you know is a result of everything around you. So how can you claim it to be yours?