http://www.internetnews.com/bus-news/article.php/3394361
August 12, 2004
Gmail Trademark in Dispute
By Susan Kuchinskas
While news of the beta launch of Gmail, Google's free Webmail service, thrilled the public, it sent a few companies running to the U.S. Patent & Trademark Office to stake their claims.
According to USPTO records, Google's March 31 news inspired a bit of a land rush, with four other companies filing applications to set their claims in stone.
The news is the latest in a series of missteps that have come to light as Google's IPO approaches. The Mountain View, Calif. search provider expects to raise as much as $3.3 billion in its initial public offering, with trading expected to start the week of August 16.
Google has made multiple revisions to its prospectus, but still has not disclosed that it may not be able to continue using Gmail. The IPO prospectus clearly states, "Our unregistered trademarks include ... Gmail ...."
Gmail is officially in beta, and the company certainly has enough cash to make attractive buy-out offers to the other claimants. It's a serious gaffe.
Google must compete equally with the other claimants.
"The application process is first come, first served," said Sharon Marsh, a USPTO administrator. "Applications are processed as they're received, and the person second in line will get a refusal of registration from our examiner."
Google is fourth in line. First is Cencourse, a Miami, Fla., company that provides multimedia services, with an application filed March 31,2004, the same day Google's news broke. Next up is Precision Research, a Santa Barbara, Calif., company that consults on the design of high-tech equipment, with an application dated April 2. Following them is the British firm Independent International Investment Research (IIIR), formerly known as The Market Age, which operates Pronet Analytics, a stock research service; IIIR applied on April 3. Google didn't file its application until April 7, but at least it beat the Gospel Music Association's April 8 paperwork.
"We will continue to develop and build upon our Gmail brand while pursuing registration of the mark, in class 38, with the USPTO," Cencourse CEO Steve Sikes told internetnews.com. But he isnt feeling litigious. "We prefer to refrain from comments concerning 'infringement.'"
Shane Smith, IIIR chairman and CEO, told internetnews.com that his company's attorneys have contacted the acknowledged leader in search.
"All I can tell you at this point is that we are in discussion with Google regarding their proposed Gmail service," he said.
Google spokesperson Steve Langdon admitted the company had been contacted by IIIR, but would not confirm that discussions were taking place.
"We are confident in our right to use the trademark Gmail," he said.
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.
He confirmed that IIIR sought trademark protection in the United States when it became aware of Google's plans.
"Having invested in making our target market aware of our service, we wish to avoid the confusion that would inevitably arise if a much, much larger firm were to brand its service indistinguishably from our own," he said.
It's likely that the dispute is headed to the Trademark Trial and Appeal Board. The USPTO's Marsh explained that, although none of the trademark applications had been assigned to an examiner yet, they would not be assigned to one person who could sort out the claims.
"Our attorneys pick up work as they need additional work, and cases are assigned in order received," she said. However, the examiners can search other applications in progress and use the information in making their determinations.
Marsh said that companies can oppose others' applications or petition the USPTO to cancel a trademark registration. At those times, the examiner will consider who used the mark first.
In Trademark Trial and Appeal Board proceedings, Marsh said, "Looking at issues like the dates of use and who used the mark first are usually very important." Generally, she said, the first person to use it will win the trademark, "but there can be some legal twists and turns."
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. Neither organization returned calls.
This isn't the first time Google has fallen afoul of prior trademark claims. Its very name is in dispute: Stelor Productions filed two briefs opposing Google's trademark registration with the USPTO. Stelor has held a trademark on the term "Googles" for children's books since 1994 and applied to extend that to computer services, including e-mail, online bulletin boards and general kid-friendly information.
Richard Wolfe of Holtsville, N.Y., operator of Froogles.com, an online bargain shopping site, filed an opposition to Google's March 2004 application for a trademark on Froogle, the name of its own product search service.
Maybe next time, Google should google before it chooses a name.