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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."
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?
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,
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)
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.
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