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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."
George W Bush!
Yeeehaaaa!
Gmail is so wide spread, how can they not get the trademark? And fp?
change it to @google.com?
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?
So Google doesn't get it trademark - I'm not going to loose sleep over it - it's funny really.
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
Thanks to file sharing, I purchase more CDs
Thanks to the RIAA, I buy them used...
Gmail isn't that good of a name any ways. They can just call it google mail. mail.google.com is that so hard?
The USPTO does not create the laws regarding how the legal protections are granted. The USPTO executes the laws that are created by Congress or adheres to the court decisions that are given in appeals cases.
I know, I know, everyone at Slashdot is "so smart" that they can't be bothered with things like "how it really happens" or "the truth", ha ha, but I felt like tossing that out there anyway. Hate the USPTO for making bad patent laws! Breathe through your mouth! Yay!
rename G-mail to G-spot. Fits in nicely with their new playboy image as well. ;)
"Is this just useless, or is it expensive as well?"
google won't be denied the ability to EVER use the gmail trademark, they might just have to buy it from someone else.
Doesn't anyone here know anything about the patent and trademark law they whine so constantly about?
wouldn't you prefer an email @google.com anyway? it sure would be easier to remember, and might become more popular than "@hotmail.com"
Is it still called cybersquatting when the other companies have been using the name for *years* already? One has been using it since 1998, fer cryin' out loud.
Granted, I'd consider it a bit fishy that they only now bothered to trademark it (unless they were concerned that Google would force them to change), but they do have a legitimate claim to the name.
Good thing management is going to have all of the voting power with their B shares and the suckers who buy in the auction won't have much say as to how the company is run. Otherwise management might actually be accountable to the shareholders. Real democratic Google.
It doesn't look like the gmail trademark means anything but $'s to that handful of other companies; they're just trying to squeeze some cash out of google. I hope google gets it back, or there's going to be some angry beta testers (myself included). Definitely some poor planning.
Its a business, if they didnt think of doing that first, they are fools..
---- Booth was a patriot ----
Call it gspot :)
eh.
(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.
It's not even out of beta yet for cryin' out loud. All Google has to do is rechristen it as something else and actually trademark the new title.
Shh.
I notice on /. that folks are always looking at motivation when all that should matter under law is the law and it's technicalities. In my own encounters with the legal system, it's been made clear to me that the letter of the law is what's paramount, in this case if someone was using the name already and applied first then google will have to just take the lesson and move on. At least that's what happens to us little guys...
It's early enough.
Gmail isn't open to the public yet.
Change the name.
When it's open to the public, ppl will recognize it only by its new name, and the pr*cks who tried to profit from registering it will be out in the cold.
Watch the Teaser Trailer for "The Lightning Thief" Her
...not enough business-minded people. Could that explain it?
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.
Sorry Google, please pay for your name.
I interviewed with them and from what i could tell they are seriously screwed up. Apparently while I was in the air flying out there (on the reservations _THEY_ made), they called my apartment leaving a message trying to cancel.
I show up to the hotel and there is no reservation for me, so I'm forced to pay $200 out of pocket (not cheap for a college student). After the interview, there was a series of hijinx which I will not go into here. I had to send them a reminder e-mail to reimburse me for the hotel room. Then several months later I get a note from one of their financial departments asking me to fill out a survey so they could better get to know their "suppliers".
They were so screwed up they somehow thought I was a contractor or other service provider. How can a company not even know where and why their money is going? This incident, combined with some of the recent news doesn't give me a lot of hope for that company.
Let's see, Orkut privacy violations, accusations that Orkut is stolen IP, "forgetting" they gave 28 million shares to employees and contractors, apparently violating SEC quiet registration period, "forgetting" to trademark Gmail, and so on.
I used to love Google like every other techie, but I've been seriously disillusioned. It won't take much for me to switch my preferences to another engine.
The more you know, the less you understand.
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,
Anyone else notice the similarity between the way the legal profession operates and the way 2 year olds behave
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...
oops, made a typo, bad.
In Soviet Russia, I ruled you
Geek fandom aside, you don't launch a product (even a beta) and not grab the name.
One does have to already have used a mark in interstate commerce before registering the mark in the USPTO.
has there been any dispute for the domain name itself?
No. Google owns it legally.
The 4 companies who went to the USPTO went AFTER they came to know of gmail.
Google owns the domain gmail. Case over.
If this dispute comes over at USPTO and/or ICANN, Google will win the case.
For those 4 companies, they are leeches. The only people who benefit handsomely from this is the lawyers.
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)
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.
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.
Is this your purpose in life? To run around and correct peoples typos?
Man you are annoying...
---- Booth was a patriot ----
Not to mention "gmail" uses 4 letters that are in "hotmail"....Microsoft the holder of Hotmail.com will soon be getting into the battle to destroy gmail.com just like they did with lindows.
Someone run off and register AMail, BMail, CMail, DMail, FMail, HMail....
Gomail is probably already in use, but Goomail is more fitting I think.
Dan East
Better known as 318230.
Looks like gmail.com has been through a bunch of iterations. Not sure how on topic this is, but it's interesting to see the different sorts of things that the domain has been used for.
How does one part of the company (the IPO people) know that there are important company assets not registered, and the other part (the asset management people) not realize this information until its released to the public?
What a messed up company.
The surprise isn't how often we make bad choices; the surprise is how seldom they defeat us.
perl -e "s/gmail/NEW_NAME/g;" -pi $(find ./ -type f)
Or do you have to patent (see, this still sounds strange to me) your name if you want it reserved nationally? I thought you patented your inventions, not the name of your business, etc..
Need a Linux consultant in New Orleans?
Maybe at first gmail is april fools afterall. Just because the public received it so well google decide to do it for real. That is why they never register the trademark.
So is this a bad time for me to lay cliam to the name? I made a program bad in my second year at university that was called GMail.
Gmail's web interface is second to none. I don't want to see this email service threatened. Actually, I would like it if they gave me @google.com for emails, because @gmail.com just sounds so... dirty.
Also, I don't know why people think slashdot as a whole is biased against MS. Sure the editors are. But I see more posts on MS vs. linux stories defending MS than attacking it.
Personally I think the idea that the community on slashdot is anti-MS is vastly over-exagerated.
Myself, I don't like Microsoft much, but I have to use their products. I'm glad they're starting to get their act together with SP2, and I'll be interested to see what they do with Longhorn.
I think this is a non-issue. Wasn't the concensus of the Katie.com issue that as soon as you register the domain you automatically have rights to the trademark?
Well, gmail.com was registered back in 1995 according to the whois I just did:
Domain Name: GMAIL.COM
Registrar: ALLDOMAINS.COM INC.
Whois Server: whois.alldomains.com
Referral URL: http://www.alldomains.com
Name Server: NS2.GOOGLE.COM
Name Server: NS1.GOOGLE.COM
Name Server: NS3.GOOGLE.COM
Name Server: NS4.GOOGLE.COM
Status: REGISTRAR-LOCK
Updated Date: 31-mar-2004
Creation Date: 13-aug-1995
Expiration Date: 12-aug-2006
Strangely enough, google.com wasn't registered until 1997:
Domain Name: GOOGLE.COM
Registrar: ALLDOMAINS.COM INC.
Whois Server: whois.alldomains.com
Referral URL: http://www.alldomains.com
Name Server: NS2.GOOGLE.COM
Name Server: NS1.GOOGLE.COM
Name Server: NS3.GOOGLE.COM
Name Server: NS4.GOOGLE.COM
Status: REGISTRAR-LOCK
Updated Date: 03-oct-2002
Creation Date: 15-sep-1997
Expiration Date: 14-sep-2011
Perhaps Google bought gmail.com from the original owners (who, I presume, would have owned the original rights to the trademark).
Either way, Google's lawyers should be fine.
rcwoolley
(Unfortunately, I can't log in right now)
[100% ISO 646 Compliant]
SVM, ERGO MONSTRO.
Of course that's not in question.
/.'s sig limits.
The whole debate is over whether there is any consciousness there, much less computational power exceeding that of a mouse, or in the case of some of the more extreme anti-abortion views, a blob of undifferentiated cells.
I say it is a stupid sig, not because it is in support of a position I consider stupid, but because it isn't even addressing the main point of contention (the whole "child" thing). But I guess a sig that actually tried to attack that issue would be a bit too large to fit in
.
You might be on the wrong end of this trademark case. You might think that if you get this trademark, you can get a settlement from google but with your "opportunistic" dash to the USPTO to register Gmail, you are harming further business for your company.
This case will come up for dispute at the USPTO and will be taken to the ICANN too. With your dash to the USPTO "after" Google's announcement, you will have to pay for good legal counsel to settle this case. And the strong indications are that it will most likely not go in your favor. Google legally owns the domain gmail.com. It announced its intentions "before" you filed for the trademark.
Gmail was previously run as Garfield mail( it was a part of the garfield comic strip website). They sold this domain name to Google.
A company that owns a domain name that is not in dispute automatically owns the right to use the domain itself.
This is a very public case and the negative publicity you generate will turn away new clients. I would suggest you re-consider your actions. Clients do not like to deal with litigious companies and will take their business elsewhere. The last thing clients want to do is pay the tab of your lawyers for cases like these which is not connected in any way whatsoever with the core services your provide.
Yahooooooooooooo!!!!!!
Speaking the truth on Slashdot? Please, for the love of God be quiet! We don't want to upset our editors or moderators, now do we? You know what happens if we do that...
WAR IS PEACE
FREEDOM IS SLAVERY
IGNORANCE IS STRENGTH
not much different from
MICROSOFT IS EVIL
LINUX IS PERFECT
INFORMATION WANTS TO BE FREE
If they can't get "Gmail" registered, then they should just get "Gmail.com" registered. I'm sure that the fact they own the domain name would insure that nobody else can use it as a trademark, despite the Katie.com saga.
I can't help but laugh at the prefacing acronym you're using. I'm assuming it means, "I am not a lawyer, but I play one on TV *something that starts with 'I'*"
When you say it out loud, it comes out as "I anal bi-pooty." Bathroom humor or not, that sounds funny.
Happiness is relative, Based upon the way we live.
God Bless America.
Google would indeed lose out...if another company can get the trademark registered. However, seeing that others use the same name, and Google's gmail is so widely known, they probably shouldn't be able to register the trademark. And if they do, they'd lose it soon enough because they haven't been protecting it well.
So...a whole lot of badness _could_ ensue here, but I don't think it will.
Please correct me if I got my facts wrong.
I don't think I'll invest anything in Google. The mistakes made are too numerous. Their judgement in many areas is questionable. Like improper share distribution, interview timing, forgetting to register Gmail. Is the company being run by idiots?
In spite of the above I still think it's the best search engine around. Go figure. The product is great and the management team appears to be a thundering heard of dumbass.
Professional Politicians are not the solution, they ARE the problem.
if i remember correctly there is TM and R the TM are trademarks that you get becasue of recognition and use and R are registered trademarks. i doubt google is in toruble most people associate Gmail with google anyway so it is already TM.
The war with islam is a war on the beast
The war on terror is a war for peace
Mayhaps it was always planned like this. They could launch the beta and then have to take it down for reasons out of their control, and then they wouldn't get the negative image, since they wouldn't have wanted to..... AHH
My Oldsmobile G-body mailing list looked at getting the gmail.com domain about 7-8 years ago. At the time it was owned by a gay-porn mail service. They were willing to sell but we settled for another domain instead. Hindsight being 20/20 and all we could be rich now :)
Real programmers use "copy con program.exe"
If it took Google months to put together what Yahoo did in a day, then Gmail probably isn't worth having in the first place.
This sort of forum does *not* warrant the time to proofread a comment for grammatical purity, nor do any of it's readers deserve the effort on my part.
I agree that if this was a legally binding document, or a block of programming code, it would matter.
Slashdot comments are nothing like either.. So it doesn't matter *at all*.
You all need to get a life, and worry about things that are actually of some importance..
---- Booth was a patriot ----
The assumption that everyone will be selfish and greedy is just an excuse to be so yourself. Thoughtful and kind people should conciously band together to work against selfish people.
Change the name to GoogleMail or Gmail.com and keep using the domain, I say :P
No shit. I was talking about similarities with the "first come, first served" system.
'Thats they exact same thing a banana wrench monkey.'
I mean, shit, come on. It is just basic to trademark your corporation's name in association with what you do for profits. Not doing so smacks of stupidity! Maybe they should have finished college before starting the company.
And now an interview during their quiet period... well, duh! Like they didn't know there was an IPO in the pipe when they gave the interview. How stupid can you be? If they didn't say "We're doing an IPO next year, and want Playboy to sign something saying they won't publish it during the legal quiet period" they deserve what they get.
In my opinion, Google needs to shape up its business practices if it is going to be subjected to the intense scrutiny that comes with being a publicly traded corporation. They can't pull this half-assed stuff and expect to get away with it, because as we're seeing now, they won't. The eye of the press is un-blinking. Mistakes like this scuttle bright fortunes all the time. It would be a shame if this happened to Google, because I really like them.
I suggest they hire an old guy, (50+) to act as the company's spokesman. Somebody who has been through a million IPOs, who knows the rules and who can make public statements without screwing up the whole company. If I were a google shareholder, I'd expect no less.
Who did what now?
You *are* reading them, as many others have in the past, so don't as *me* why... Look deep inside yourself for the answer to that mystery, grasshopper.
And good for you that you proofread. I don't feel its worth my time, as my point gets across regardless of any errors I let slip thru to due my carelessness.. In 'real life', I wouldn't let such errors propagate beyond my draft copy.
Here, it really just doesnt matter.
---- Booth was a patriot ----
You give the State authority over the management of ideas.
Thom Jefferson was completely right, too bad he couldn't plan well enough to handle morons 400 years down the line.
Moogle.
Well, there's always ooglemail. :-\
spin, spin, spin you whirling dervishes of microsoft hate
"achademic"
Is that a new word for students of alchemy?
- sigs are for wimps.
Quite funny.
@users.google.com
or change staff to @staff.google.com
Sig out of date
It's cute, and sort of descriptive of the events.
Why would their bureaucracy be partly to blame for Google's being denied a trademark? Agencies don't get much less bureaucratic than first come/first served.
http://www.gmail.co.uk/
http://www.gmail.de/
http://www.gmail.no/
http://www.gmail.it/
http://www.gmail.dk/
http://www.gmail.ru/
http://www.gmail.net/
http://www.gmail.org.uk/
http://www.gmail.cn/
A whole new wave of "Can someone invite me?" bbs spam messages ;)
It was a Hypercard based email system. This was MORE than 10 years ago.
... I never liked "Gmail" anyway. Wish they'd just call it "Google Mail" and make the url "mail.google.com".
Flying is easy, just throw yourself at the ground and miss. -Douglas Adams
s-wise. I mean, come on. Establishing a flagship service without even checking if its name has been registered already? I smell something funny here. These fellas may be a bit too carried away with technology. Technology, unfortunately, is not the only thing there is to business these days. Legal issues are just as important.
Fortunately, a new interweb tool called a search engine makes this process much faster than it used to be. A number of fantastic, dynamic companies, such as Yahoo, Lycos, and Altavista, have sprung up to build these engines using cutting-edge technology.
To use a search engine, go to the search engine website and type the word you wish to search for into the text box presented. Press the "search" button, and, in as little as 30 seconds, the search engine will scan all of the websites it has indexed, and present a list of results ranked by importance, using sophisticated relevance-calculating techniques.
Some newer search engines allow scanning of up-to-the-minute news articles, and even popular forums such as Usenet.
---- "If we have to go on with these damned quantum jumps, then I'm sorry that I ever got involved" - Erwin Schrodinger
I totally agree. I always said Google should have asked Ernst Gräfenberg for permission before starting to use the name "G-mail." They didn't listen to me, so they're in trouble now. They asked for it if you ask me.
Sincerely,
Pan Tarhei Hosé, PhD.
"Homo sum et cogito ergo odi profanum vulgus et libido."
Google creates some of the world's most advanced software. Yet they seem to have roughly the same business acumen as my 13-year-old yellow labrador retriever. First they get caught doleing out shares of their pre-IPO company to employees and consultants, then they violate their pre-IPO quiet period with that Playboy interview. And now this. What's next, lap dances for their S.E.C. review board?
"BULLSHIT!" Like on the Matrix Reloaded in the room with the Architect, Neo and all the monitors mimic.
This should be capitalism at it's finest. Give Gmail to the big Google coperation! (notice no tags.. I'm serious here!)
-----
Make Love not [Browser] War!
Sure I'll give you a better system. A system based on consensus rather than a jury-based system where rules are based on votes - which are by structure unfair.
Trademarks just have to be useful identifiers. Google can easily rename their service to any of a virtually infinite number of things, and get a mark for whichever they settle on.
You should NEVER get too attached to a mark; as long as it uniquely identifies a source, that's good enough.
Certainly there's no lack of companies around here with unusual names that while themselves unrelated to the business (e.g. Apple, Yahoo, Amazon, Kodak) are well known anyway.
-- This and all my posts are in the public domain. I am a lawyer. I am not your lawyer, and this is not legal advice.
Well, if worst comes to the worst they have Google anf Froogle... so how about GMail becoming Moogle? :P
No, wait...
I guess it's time to trademark "gspot"
This is +5, Excellent. If anyone doesn't get it, see: Ernst Grafenberg on Wikipedia.
Well, I'd have to rate your comment at least a +1 informative/insightful for that. From what I've seen, their stocks ahve been over valued and over hyped. This can only lead to a few things. Googles demise, or moderate success. Their stock will go down and that's a no brainer because it has nowhere to go, so count this circle of friends out for buying their stock. Following the advice of Warren E. Buffett you'll see that this isn't the way to go.
Now in another area from what I can see, they need to hire some competent men to seriously give the business side of the company an overhaul. Why? Because the trademark issue problem they're running into now! I myself have registered for two trademarks for my company and expecting one to take off while the other not too take off very much at all. In doing this, I can assure no one else will snatch the (TM) from under my feet and have some green to steal from me (legal theft IMHO) and I'm a first time business owner/entrepreneur.
This is just my simple observation and maybe it was an honest oversight in their department. However, in any case they need to hire some people that can help with the business side of things who can and will do business to protect their investments in the future.
... going to have to be me@goomail.com
Establishing a flagship service without even checking if its name has been registered already?
It hadn't been registered when they started using it. Some companies noticed in Google's pre-IPO SEC report that they hadn't registered Gmail with the USPTO yet. Some small companies with dollar signs in their eyes immediately filed for the trademark, beating Google to the punch.
Why Google didn't just apply for the trademark BEFORE issuing the report, I don't know.
So there would be proof that it does exist! I could stop researching thru pron, finally.
That's ok. Goomail is better ;-)
A few years ago I had a little box dropped on my desk that stores voice messages from a PABX and it was called GMAIL of all things
I just got this account! If my domain changes because of some asshole company, I'm gonna be pissed! Makes me wish I thought of it though.
Why can't all fpga/microcontroller manufacturers just release free optimizing compilers???
change it to @google.com?
That wouldn't be impossible: Yahoo! offers @yahoo.com email.
-----------------------
You are what you think.
I was having a hard time getting a Gmail account
:-) @geemail.com!
and then it took over 2 months to get an invite
for a freind. So I get SCREEN SHOTS!
http://www.pro-gram.us/gmail
If Google is blocked from using gmail.com for
trademark reasons, I'm sure they'll keep the mail
alive and just transition us all to a new domain
like @googlemail.com and we'll all get used to it.
Or maybe
Wm
http://gmailtrader.com/ has free invites as of today and i got 1 so thanks slashdot i found that site thru reading this thread