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Gmail Under Trademark Dispute

Posted by CowboyNeal on from the race-to-the-finish-line dept.

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."

46 of 273 comments (clear)

  1. anonymous coward by Anonymous Coward · · Score: 3, Interesting

    change it to @google.com?

    1. Re:anonymous coward by DJayC · · Score: 3, Insightful

      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.

    2. Re:anonymous coward by luferbu · · Score: 3, Informative

      Not really, corporate Yahoo! mail is @yahoo-inc.com.

  2. Uh... it's pretty much Google's fault by SilentChris · · Score: 5, Insightful

    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?

    1. Re:Uh... it's pretty much Google's fault by thebes · · Score: 2, Insightful

      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.

    2. Re:Uh... it's pretty much Google's fault by ajs · · Score: 2, Insightful

      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.

    3. Re:Uh... it's pretty much Google's fault by GoofyBoy · · Score: 4, Informative

      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.
    4. Re:Uh... it's pretty much Google's fault by macshit · · Score: 2, Insightful

      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.

      --
      We live, as we dream -- alone....
  3. the early bird gets the worm by night_flyer · · Score: 2, Insightful

    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...
  4. This is easy. by alarocca · · Score: 2, Interesting

    Gmail isn't that good of a name any ways. They can just call it google mail. mail.google.com is that so hard?

    1. Re:This is easy. by allism · · Score: 2, Interesting

      It's not just a matter of the name - it's that thousands of people are already using @gmail.com email addresses.

      I was seriously considering dropping my email account through register.com and switching everything to gmail - the interface is clean and easy to use, it has nice search functions, it has a nice storage capacity, it is fairly bug-free, and the page response times are very fast - unlike my register.com webmail access, which is incredibly slow.

      --
      Denver Isuzu Suzuki
    2. Re:This is easy. by elucubra · · Score: 3, Insightful

      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.

  5. Easy Solution! by blue_adept · · Score: 4, Funny

    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?"
  6. Cybersquatting? by Daniel+Boisvert · · Score: 4, Interesting

    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.

    1. Re:Cybersquatting? by maverick215 · · Score: 4, Informative

      a quick search of the gospel music place turns up this link
      http://www.gospelmusic.org/news/GMAil_topsto ry_07- 10-03.cfm
      10 july 03
      apparently they've been mailing their Gospel mail (gmail) for several years (supposedly since 1999)

    2. Re:Cybersquatting? by allism · · Score: 2, Interesting

      OK, here's something interesting - google has had gmail.com registered since 1995. Who is considered 'first' in this case?

      --
      Denver Isuzu Suzuki
    3. Re:Cybersquatting? by servoled · · Score: 3, Informative

      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".
  7. Google will probably prevail by ScottSpeaks! · · Score: 2, Informative

    (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.

    1. Re:Google will probably prevail by ToKsUri · · Score: 2

      Shouldn't it be google the one who needs to proove that the otehr companies don't have an intent to use gmail as a trademark?
      It seems as if it is google who has a problem, why should the first company make any effort what so ever in demostrating the will of their trademark?

      --

      __
      Sig: Marine Stock Photos

    2. Re:Google will probably prevail by ScottSpeaks! · · Score: 2, Interesting

      Trademarks are not like domain registrations, with the first filer automatically getting it. Any new trademark registration is first published for opposition, to give others with competing claims to the mark an opportunity to challenge that registration. If Google had been first to file and someone else was already using it (as has been alleged), they'd get the same chance. That's part of this USPTO bureaucracy that people are moaning about... and it's a part that serves a useful purpose.

  8. Too many PhDs... by mookoz · · Score: 2, Insightful

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

    1. Re:Too many PhDs... by demachina · · Score: 2, Interesting

      If you look at Google's org chart three of the top five people are Sun business veterans. The other two being Larry and Sergei.

      Of course, Sun looks kind of like a ship without a rudder headed for a reef so maybe Google picked the wrong ship to recruit their bridge crew from.

      Their head of product management is from @home which isn't exactly a success story at this point.

      --
      @de_machina
    2. Re:Too many PhDs... by demachina · · Score: 2, Insightful

      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.

      --
      @de_machina
    3. Re:Too many PhDs... by demachina · · Score: 2, Informative

      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
  9. Gotta love the unbiased reporting on slashdot by Jason1729 · · Score: 4, Insightful

    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.

  10. This seems epidemic at Google by maelstrom · · Score: 5, Interesting

    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.
    1. Re:This seems epidemic at Google by rs79 · · Score: 4, Funny

      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".

      So send them an invoice.

      --
      Need Mercedes parts ?
    2. Re:This seems epidemic at Google by dubiousmike · · Score: 2, Interesting

      the fact that you had such a bad interview experience with them and STILL use them as a search engine speaks volumes for how kick ass Google is. It has taken way less for me to swear off companies like Circuit City and ToysRUs.

      as far as gmail is concerned, who cares??? switch to a different domain for your mail service and we will all follow. Whichever small company spends buckets to get the domain will still be pissing in the wind when its all over. We will all wuickly forget gmail.com and move onto google's new email service domain...

  11. It's not who registers first by Ivan+Karamazov · · Score: 5, Informative

    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,
  12. MINE MINE MINE by Crashmarik · · Score: 4, Insightful

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

    1. Re:MINE MINE MINE by ScottSpeaks! · · Score: 2, Insightful
      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}

  13. Denied... by dmayle · · Score: 2, Informative

    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...

    1. Re:Denied... by DAldredge · · Score: 3, Insightful

      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!

  14. The usages are different by optimus2861 · · Score: 5, Insightful
    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)

    1. Re:The usages are different by jc42 · · Score: 2, Interesting

      "Yes your honor, my client has plans to launch an email service before Google."

      Your lawyer might have a bit of a problem supporting that, considering that google registered gmail.com nine years ago. Maybe the media (including /. ;-) only just noticed the project. But to a court, that merely shows your own lack of attention. It sure looks like google has spent nine years developing their product, and as soon as they make it public, others jump in and try to claim the name for themselves.

      Of course, it's likely that google's attitude is that they aren't much concerned with trademark. The word "google" was an English-language dictionary entry long before there was a computer industry. They not only can't stop us from using it as a common verb; they clearly benefit from this. (And they've added another item in the dictionary entries. ;-)

      What matters most is that they own "google.com" and "gmail.com". If others try to claim "google" or "gmail" as trademarks, what does it matter when you've owned the domains all along?

      --
      Those who do study history are doomed to stand helplessly by while everyone else repeats it.
  15. Tried and True by Mr_Blank · · Score: 3, Insightful

    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.

  16. Trademark Law by LawGeek · · Score: 5, Informative

    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.

  17. Why not Goomail? by Dan+East · · Score: 2, Funny

    Gomail is probably already in use, but Goomail is more fitting I think.

    Dan East

    --
    Better known as 318230.
  18. Check out the Wayback Machine by fname · · Score: 3, Interesting

    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.

    1. Re:Check out the Wayback Machine by Troed · · Score: 5, Interesting

      I find it highly interesting in this case that a company actually offered "life time" @gmail.com email adresses in -96 ...

      Your LIFETIME Email address!

      --
      it's in my head
  19. I'm confused about this by smartfart · · Score: 2, Interesting
    Why are they running to the US Patent Office to register a trademark? I was under the impression (having done this for my own company, at least locally) that you went to your Secretary of State in whatever state your business happens to be in and registered your trademarks and tradenames there?

    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?
    1. Re:I'm confused about this by iamdrscience · · Score: 3, Informative

      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.

  20. Gmail.com WHOIS Info by Anonymous Coward · · Score: 2, Interesting

    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)

  21. Re:here's the message I sent to the 4 companies.. by theskeptic · · Score: 2, Interesting

    I would suggest you READ the parent carefully. "Gmail.com" was NOT under dispute anytime. Nobody had REGISTERED the trademark UNTIL google announced it would be doing so.

    As for your comment about the Gospel Music Association, read the parent again. This matter will be taken to the courts. And they will have to hire some good lawyers to deal with it.
    I am sure the Gospel Music Association would like to throw money like water on this case, right?

    Gospel Music or the other 3 companies NEVER filed a claim for the domain name itself.
    Still got any comments about fanboyism?

  22. Re:Pretty redulous... by Guppy06 · · Score: 3, Funny

    "Gmail is so wide spread, how can they not get the trademark? And fp?"

    That's exactly the problem: Google didn't get fp at the USPTO.

  23. Re:Pretty redulous... by TheLittleJetson · · Score: 2, Funny

    yeah, serious -- trademark sillyness like this (lindows, too) is funny. why don't they just call it giggity-giggity-fuck-trademarks-mail.com -- it'll still kick ass.