New Legal Threat To GMail

wellington writes "Google is facing a renewed threat of legal action from a company that claims to own the intellectual property rights to its GMail e-mail service. Independent International Investment Research, a British company that specialises in research and has several leading City investment banks as clients, argues that it launched "G-Mail web based email" in May 2002."

Aaarrgggh!

[gowen]

intellectual property rights to its GMail e-mail service.

Look, if you keep using the catch-all phrase "Intellectual Property" to cover distinct ideas, no one will ever get smart about the differences. This is about a trade mark "GMail" -- only the *name* is the important thing here.

And they did register that trademark long in advance of Google.

Re:Why so long

[Enigma_Man]

If you RTFA, you will see that the company is a small company, and was involved in communication with google over the span of 15 months or so, before jumping right into litigation. That sounds like the right thing to do, IMO, rather than just sue immediately. The company is a small one, and they say they don't have the big money that Google has to bring a law suit just to protect their name.

-Jesse

'Intellectual property'

[Ed Avis]

The summary for this story is another good example of why the phrase 'intellectual property' should be avoided [gnu.org].

The company does not 'claim to own the intellectual property to GMail'. It has a trademark claim. This is completely different and unrelated to any copyright interest, patent held, or trade secret. Lumping them all together as 'intellectual property' which can then be 'infringed' in some vague way just muddies the issue.

That's what they're claiming ...

[Augusto]

... the summary is correct, they're claiming:

"IIR, led by chairman and chief executive Shane Smith, accused the search engine of "failing to respect the intellectual property rights of others" and said it had no alternative but to pursue an expensive legal action that it admitted it could ill afford."

"I feel it is up to me as the founder and the major shareholder. We're not going to sit on the sidelines while a company uses our intellectual property rights," he said. "We're confident that we have the funding available to us and we're girding our loins," he said."

It's silly, but the summary is correct.

Re:Why so long

[HikingStick]

A careful review of the full article reveals that the company attempted to resolve this with Google out of the courts over 15 months ago. In the business world it is the responsibility of the newcomer, not the existing business, to conduct a name search when launching a new product or service, so as to avoide disputes like the one described here. Google may have conducted such a search, but may have felt that its service was sufficiently unique so that its use of the name "Gmail" would not cause confusion in the marketplace. The courts generally hold that other businesses can use the same name if 1) the newcomer is not trying to leverage (claim) the reputation or the name of other existing businesses, and 2) the new business is in a different sector than the existing business so there will be no brand confusion. For example, the courts would generally disallow another restaurant from claiming the name "McDonalds", but they probably would allow an antique store named "McDonalds", providing the antique store doesn't try to piggyback on the hamburger chain's image (by using, for example, golden arches in its logo).

Re:Sounds legitimate

[LWATCDR]

Actually there service is G-Mail not GMail.
And the service is specific to the currency trading business. There is almost no overlap and the names are different. Yes it is by one character but when you only have five to start with that is significant.
Frankly if the trademarks are not identical then I would say no case. But then Microsoft somehow has convinced people that they invented using "windows" in a GUI. I wonder when they will sue X-Windows?
After all X-Windows is a lot closer to Windows than Lindows was.

Re:Sounds legitimate

[kubrick]

It's the X Window System [x.org], not X-Windows as you claim.

Re:That's what they're claiming ...

[ptomblin]

The summary is correct in that this is what the CEO is saying. The CEO is using "intellectual property" in the broadest sense - this is a trademark issue.

Re:Sounds legitimate

[Anonymous Coward]

Actually, it sounds like they have a questionable claim here. I do not claim to be a European trademark attorney, however, if you look at the U.S. record system:

TESS S/N 78395931 for the word mark "gmail" is held by the Trustees of the Smith Trust Shane Smith and Karen Griffith, both citizens of the United Kingdom. The registration application was filed on April 3, 2004 and claims a first use in commerce of 20020528 (May 28, 2005).

TESS S/N 78395746 for the word mark "gmail" is held by Google. The registration application was filed on April 2, 2004 and claims a first use in commerce of 19980120 (Jan 20, 1998).

Interestingly TESS S/N 75629087 for the typed drawing "gmail" used to be held by a man named Milo Cripps. The registration application was filed on January 28, 1999 and claims a first use in commerce of 19980120 (Jan 20, 1998).

Neat coincidence. The records indicate that the mark was abandoned on Feb 18, 2000, but that does not necessarily mean that the applicant abandoned USE of the mark. Without knowing more, I cannot evaluate the claim. However, Google could very well have bought out Mr. Cripps business sometime prior to launching gmail, in which case their trademark priority will relate back to Mr. Cripps usage, which predates IIIR's usage.

Warning: link to TESS search [uspto.gov], which may not work if it's dependent on a session variable.

Re:Yeah, but...

[Anonymous Coward]

You're thinking of the wrong "domain". Not domain like gmail.com, domain as in area of interest.

I really thought ...

[DoktorTomoe]

... this was a german company, with its product named "G-Mail, und die Post geht richtig ab" [gemail.de] (roughly translated "G-Mail, and the mail really gets going"). They also tried to sue people selling GMail invitations on eBay [heise.de]. a legal case is open in Germany, and GMail is obliged by a court order not to give @gmail.com-adresses to german users - those ones get @googlemail.com adresses instead [which also work with gmail, but this is not yet well-documented.])

The fact that the british and the german trademarks are so similar to each other makes me think... does anyone know if there are connections between those companies?

The letter 'G'

[Baric]

'mail' is a generic term. G is just a letter, devoid of any meaning beyond a possible abbreviation. In this case, it's a legitimate abbreviation for 'Google'. This reminds me of IBM trying to trademark the number 2 to stop vendors from making PS/2 compatible computers called "PC/2" They lost. Intel tried to trademark the number 386 & 486. They also lost. I'm not a google apologist or anything, but I think the litigants don't have a case

Re:G?

[Pius II.]

The German telecom already owns the T. They sued everybody who had a T in their trademark or web adress. That includes owners of domains such as "t-beutel.de" ("tea-bag.de"). They also have a trademark on the colour magenta (yes, the M in CMYK) and have been known to sue people using it in advertisements (a common practice for magazines where you pay per colour used).

Re:GMail = Google Mail

[cabjf]

Except that all the email addresses end with "@gmail.com." If google changed it to "@google.mail.com" or some similar name, everyone with a gmail account would have to change their email address.

Re:Aaarrgggh!

[AKAImBatman]

try marketing your Micro-soft operating system and see how long that "but we had a hyphen!" argument holds up.

You might be able to get away with it if you use significantly different styling for the logos. e.g. Microcenter could cause brand confusion if they styled their brands in such a way as to make the consumer believe that they were a Microsoft company.

However, a judge would probably find that you were attempting to cause brand confusion based on the shear popularity of the Microsoft mark.

In this case, however, my understanding is that Google didn't learn of the mark until a month after they launched their service. In addition, the two services operate in different markets. So Google has a strong case in that the two services are unlikely to be confused, and that Google has been using the mark in good faith.

Doesn't matter. The Firebird database is a niche item, but they'd still have won a trademark case with Mozilla Firebird.

I wish people would stop repeating nonsense like this. As with many legal threats, there was no court case. Since there was no court case, there was no determination of brand validity. Since there was no determination of brand validity, there is no legal precident steming from the issue.

The most that could come out of it is that if Firebird (database) ever went to court over their name again, they could claim that Mozilla decided to settle because they believed in the validity of Firebird's claims. (In reality Mozilla just didn't want any trouble, so they picked a truely unique name.)

Re:G?

[Anonymous Coward]

In Germany the official name for GMail is "Google mail" due to the previous legal threat there by "Giersch Ventures". This is why the domain was changed to mail.google.com and googlemail.com also exists.

Even though it was launched as such, IMHO if you actually look at the 'GMail' logo it doesn't read 'GMail' it is G[underneath "by Google"][envelope]ail. Also notice how the envelope 'm' is only the same height as the "a" in "ail". So no, to me it reads "G. mail" (as in an abbreviatiation), "Google mail" or "mail by Google".

From the articles 3rd and 4th paragraph's it doesn't even sound as if Google and this company are in the same business.

On the other hand. Why hasn't the German company "Giersch Ventures" that caused the previous legal problems for Google tried to sue this British company yet? They have had the "G-Mail" term trademarked since 2001. Maybe a taste of their own medicine would sort the IIIR out. After all, using your 'intellectual property' is using your 'intellectual property' no matter how much the other company is worth or they can pay you in legal compensation. Right?

After a search it seems the "Independent International Investment Research" shares some ground with "Giersch Ventures". Both offer financial servicey type things dealing in investment and I would wager they have more in common with other than either of them do with Google.

Re:Intellectual property rights to GMail?

[Itchy Rich]

Saying: "Surely this is just trademark infringment at most. The summary seems to infer that general IP rights" Is very much like saying: "surely this is just a problem of buffer overflow. The summary seems to infer that general security issues are involved, rather than just a buffer overflow."

Slight misquote there. Cheeky. You chopped off the bit that said "general IP rights [to the service]". Possibly I could've been clearer but I was distinguishing the service (patents/copyright) from the name (trademarks). I'll ignore the slightly abusive tone of the rest of your post since you didn't understand.

Re:Intellectual property rights to GMail?

[stienman]

A trademark is intellectual property (IP).

IP encompasses several "properties", some of which are:
Copyrights
Patents
Trademarks
Trade Secrets

So the GMail service is accused of being in violation of the intellectual property of some other company.

-Adam

mods: funny?!

[dunkelfalke]

it is not funny, it is sad truth here in germany

Re:GMail = Google Mail

[justforaday]

Not to mention that you could access mail.google.com more or less since the service was introduced...

Girded loins

[SeanDuggan]

On the off chance that you're serious in your ignorance, "girding [one's] loins" is a turn of phrase stating that one is preparing for action with the allusion to battle. It's kind of the equivalent of putting on a jock-strap.

Re:G?

[databyss]

Correct me if I'm wrong, and I'm sure many will, but aren't you legally obligated to protect your trademark or lose it?

It would be humorous to see the judge throw out the case based on the fact that IIIR and the German company aren't defending their property against each other.

Re:Fight Google?

[pmancini]

No.

Atari fell to the Samurai Sword.

--Pete

Re:mods: funny?!

[Nasarius]

He's talking about Deutsche Telekom [telekom3.de].

Re:G?

[jayloden]

If Google loses, they'll just rename GMail to GoogleMail.

They already did, at least in Germany, where it is now called "googleMail" and not "Gmail"

http://www.webmasterworld.com/forum100/241.htm/ [webmasterworld.com]

Google owns the GMAIL mark, at least in the US

[SegFault]

According to the US Patent and Trademark Office, the "GMAIL" mark has been assigned to Google, who applied for the mark on April 2nd, 2004. The Trustees of the "Smith Trust", Shane Smith and Karen Griffith, applied for the same "GMAIL" trademark on April 3rd, 2004, one day after Google Inc. The "Smith Trust" has not been assigned the trademark by the US PTO, and the latest rejection of their application was June 11th, 2005.

Perhaps someone else can post the equivalent info from the UK?

See Google's GMAIL trademark assignment:
http://assignments.uspto.gov/assignments/q?db=tm&s no=78395746 [uspto.gov]
and the Smith Trust's application status: (rejected)
http://tarr.uspto.gov/servlet/tarr?regser=serial&e ntry=78395931 [uspto.gov]

Re:G?

[Chyeld]

Products which, through lack of defense of their trademark, have become genericized trademarks:

• Kleenix
• Yo-Yo
• escalator
• Cellophane
• mimeograp h
• Xeroxing(in Russia)
• Allen wrench
• bikini
• dry ice
• granola
• lanudromat
• linoleum
• merry widow
• milk of magnesia
• plasterboard
• pogo stick
• spandex
• tabloid
• tarmac
• touch-tone
• Webst er's dictionary
• zip code
• zipper

And that list was just culled form a quick look at google using genericized trademarks as the search term. I'm sure there are plenty of others out there if you look for them.

Re:Why so long

[MirthScout]

Wrong. whois only tells us that gmail.com was first registered (created) on August 13, 1995 and that Google is the current owner. It does not say that Google was the entity that registered it in 1995.

Re:Google owns the GMAIL mark, at least in the US

[canajin56]

Here [patent.gov.uk] is the UK trademark website. If you search it, you'll find the earliest application is from Google, Inc. on April 14th, 2004. Karen Griffith applied on October 4th, 2004, almost half a year later.

So there you go. In the USA, Google applied first, and with an earlier date of first use to boot. Google quickly followed up and applied in the UK as well. These guys, supposedly BASED in the UK, didn't bother for another 6 months. Further, their only reference in their UK application was to their US application. If that application was rejected, the UK one will be too, I would imagine.

Re:Girded loins

[Ggggeo]

Just FYI...it's a biblical phrase from Nahum 2:1 -

The shatterer has come up against you. Man the ramparts; watch the road; gird your loins; collect all your strength.

That's where the phrase orginates whether the guy knows it or not.

Re:rumors

[dustinbarbour]

Easy... with you palm facing upwards, reach into the vagina with one or two fingers (3 or 4 after she's given birth to 3 kids). Now curl your fingers towards you in a "come here" motion. Woopee! You've found the G-Spot. What you're looking for is the continuation of the clit once it enters the body. Wanna be hardcore? Suck on her clit who=ile performing this "come here" motion and she'll be screaming your name in no time.

The penis is a terrible tool to stimulate the G-Spot with. There are certain positions in which penile penetration can stimulate the G-Spot, but many women find them uncomfortable. So get in there with those fingers!

Re:G?

[Chyeld]

This isn't patent law, this is trademark law. The existance of a word prior to it's use as a trademark does not exclude it from being a trademark. Otherwise Mickey Mouse would have never been trademarkable. After all, mice have existed for centuries.

A trademark is a mark which the use of has become associated with your business. It can almost be anything, witness Microsoft's trademark on Windows.

Re:Google owns the GMAIL mark, at least in the US

[databyss]

You need a trademark in any country which you wish to claim rights too.

Being a US company has no legal bearing outside the US. The UK company can claim damages in the UK, therefore the UK law and trademarks apply.

Sounds complicated, but that's how it works.

Re:gmail.com

[Rary]

It's not a typo, you're just misinterpreting it.

What the link says is that the domain was registered in 1995, and that Google currently owns it.

This does not mean that Google registered it in 1995, just that somebody registered it in 1995, and at some point since then, Google acquired it.