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."

Comments

Uh... it's pretty much Google's fault

[SilentChris]

Geek fandom aside, you don't launch a product (even a beta) and not grab the name. What did they *think* would happen?

*Scratches head* I'm not going to go as far as some press has gone and say Google's been botching the IPO, but one wonders: how are they a good investment option if they can't even get basic business procedures right?

Re:Uh... it's pretty much Google's fault

[thebes]

But they were the first to make widespread use of it, and in Canada that constitutes a trademark. You *can* register a trademark, but if you don't use it, it's kinda useless, and I'm not even sure it's valid if you don't use it. Anyone who hears the word Gmail thinks googles mail service. That is what makes a trademark a trademark.

Re:Uh... it's pretty much Google's fault

[ajs]

Correct. Unless someone else can demonstrate that they were using the term as a trademark before Google was, and in the business sector that Google was using it, they can't register it in that sector. It might be that Google can't either (being second in line), but that doesn't mean someone else can. It's different from, but similar to prior art, and is the whole reason that "Open Source" was not considered trademarkable.

Re:Uh... it's pretty much Google's fault

[macshit]

And at one point netscape kicked the snot out of *their* competitors technically and also had an overwhelmind mindshare among the public.

And they went....? (free hint: they blazed the trail that google is now following).

This is a completely bizarre thing to say -- netscape blundered around cluelessly for an amazingly long time before they finally failed. Google has not blundered around cluelessly at all.

Google's recent "troubles" are pretty damn trivial to be honest; they essentially forgot to dot some "i"s when dealing with government regulations.

So: they're technically, organizationally, financially, and philosophically strong, with good marketing; minor problems dealing with bureaucracy.

Netscape? No. Netscape was a mess.

the early bird gets the worm

[night_flyer]

but the second mouse gets the cheese...

I dont feel sorry for google in this case, in fact Im suprised they didnt think this would happen and thats just what they are saying by not registering it sooner

use google mail

[the_unknown_soldier]

wouldn't you prefer an email @google.com anyway? it sure would be easier to remember, and might become more popular than "@hotmail.com"

Re:I'm sure google will end up with it

[Anonymous Coward]

Why?? It's beta testing. they have the right to ERASE all accounts at theend of the beta test.

(Which I am betting will happen... I certianly would) anyways what makes you think the beta name will be the final name???

the bigggest whiners on this planet seems to be gmail beta testers who think they are entitled to something. Guess what you are entitled to NOTHING. and if you are one of those idiots that BOUGHT your invite then you deserve exactly what you get.

Too many PhDs...

[mookoz]

...not enough business-minded people. Could that explain it?

Re:Too many PhDs...

[demachina]

Your link doesn't seem to work. Here is Here is another one. Its the first I heard of it, its real interesting if true. It is pretty disturbing to hear that a 54 year old guy was fired right before an IPO, and they apparently screwed him out of $10 million dollars in options. To top it off a Google VP may have told the guy he was "incompatible with Google's youthful atmosphere", grounds for a successful age discrimination law suit if its substantiated.

This kind of confirms what I suspected about Google. I suspect Larry and Sergei mean well at heart but as soon as Google started to look like an IPO bonanza Googles ranks almost inevitably filled up with greedy people willing to do anything to make their killing that is mostly all you find in the valley any more. If they screwed him out of $10 million in options, then you see, thats more for everyone else to divvy up.

Unfortunately Silicon Valley as a whole is so infected with greed now I'm not sure it will ever be the great innovator it once was or even a barely tolerable place to work. Some greed is good, to much is a stalking killer.

The times I've lived in the valley nearly everyone there seemed to have one and only one mantra:

- Get the biggest piece of the hottest IPO you can find. Kiss up to or screw anyone necessary to get it.

Not sure I would trust anyone in the cabal that is Mt. View, Palo Alto or Stanford since they were infected with this disease. You see all the same names on their resumes, Netscape, SUN, @Home, SGI. You sense they are just bouncing from one source of hot IPO buzz to another in a desperate search for more 'F' you money.

You can be confident they will do anything necessary to acquire the most options possible, and sometimes that means incredible, stellar performance, othertimes it just means back stabbing and ask kissing. As soon as they can cash out the IPO then they are gone to the next killing or a luxurious and often ill deserved retirement. It is a system designed to fuel breakthroughs, it isn't a system designed to create businesses that last and that have sound values.

Gotta love the unbiased reporting on slashdot

[Jason1729]

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

Now if we replaced Google with Microsoft and gmail with hotmail, we'd all be critisizing MS for stomping on the rights of these poor little companies and non-profits.

MINE MINE MINE

[Crashmarik]

Anyone else notice the similarity between the way the legal profession operates and the way 2 year olds behave

Re:MINE MINE MINE

[ScottSpeaks!]

As contrasted with, say, the business profession?

The legal profession operates according to the structure of our adversarial judicial system, in which one side tries to get his client's way, the other side tries to get her client's way, and a (hopefully) neutral party decides who deserves to win. Yes, it's ugly, and it's a sad commentary on our society that we have to treat everything as a fight between adversaries. But it's the best we've come up with so far. Got any better ideas for a judicial system? If not, I'd have to say that your post is nothing more than name-calling, which is how 6-year-olds behave. Congratulations: you're more more mature than the legal profession. {wry grin}

The usages are different

[optimus2861]

Note in the article that what each word is using "Gmail" to refer to are slightly different. That may allow enough wiggle room for the USPTO to sort everything out. For instance:

Google wants it to offer a general-purpose web-based email service to the general public.

The investment firm uses it as a subscription-based mailing list for traders, bankers, brokers, etc.

The Gospel Music Association uses it to refer to their newsletter.

The fourth firm, it doesn't say specifically, only that it's involved in high-tech equipment design.

Remember that a trademark only protects your mark in your specific line of business; it doesn't give you the undisputed use of the name in all arenas. Not that it stops the big companies from trying to throw their weight around, mind you (Like Nissan)

Tried and True

[Mr_Blank]

News stories like this and this shut down any errant ideas I might have had over investing in the Google IPO. The company is brilliant and definitely a market leader. But the company has not yet shown that it can run itself as a publically traded company. They have no track record. They have made a few early blunders.

If you want to be successful do what succesful people do. In investing, try Warren Buffet: He invests in undervalued companies with good potential for growth. Undervalued typically requires underhyped. Google has potential for growth but is definitely overhyped. Only a fool invests at the peak and Google's IPO is definitely an overhyped peak.

Just my 2 cents - - which will be invested in not-Google by the way.

Re:Just pick another name

[Anonymous Coward]

... and everyone on gmail gets kicked off and has to re-register with the new email address. Way to impress the public.

Re:anonymous coward

[DJayC]

That's the domain that their employees use. It wouldn't make sense to offer email accounts that their employees have. Google isn't a mail service, gmail is. I really doubt the people over at google want to start throwing out @google.com email addresses. It's like @hotmail.com getting changed to @microsoft.com.

Re:This is easy.

[elucubra]

So, trademark GoogleMail, whose domain is gmail.com. Since when does a trademark automatically give you ownership of a domain, especially if you had it before the trademark?

Also, is there not a provision to prevent "reverse cybersquatting" with a trademark? I would think no judge would have any doubts.

Re:Denied...

[DAldredge]

THE OTHER COMPANIES WHERE USING THE NAME GMAIL FIRST. It's in the damn artice, why don't you try reading it.

My God, I miss the old /. when at least some of the posters had IQs that didn't have a negative sign in front of them!