Slashdot Mirror
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."
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,
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.