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Google The Internet Businesses

Gmail Under Trademark Dispute 273

Posted by CowboyNeal 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."
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Gmail Under Trademark Dispute More

Gmail Under Trademark Dispute

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  • anonymous coward (Score:3, Interesting)

    by Anonymous Coward on Saturday August 14, 2004 @10:22AM (#9966982)
    change it to @google.com?
    • or even: @gofuckyourselfgospelmusicassociation.yeahsuckitus pto.com

    • Re:anonymous coward (Score:4, Insightful)

      by DJayC ( 595440 ) * on Saturday August 14, 2004 @10:51AM (#9967096)
      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.
    • 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..

  • Uh... it's pretty much Google's fault (Score:5, Insightful)

    by SilentChris ( 452960 ) on Saturday August 14, 2004 @10:23AM (#9966985) Homepage
    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?
    • 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.
      • 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.

      • Re:Uh... it's pretty much Google's fault (Score:5, Informative)

        by GoofyBoy ( 44399 ) on Saturday August 14, 2004 @10:51AM (#9967098) Journal
        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.

    • Too many PhDs... (Score:2, Insightful)

      by mookoz ( 217805 )
      ...not enough business-minded people. Could that explain it?

      • Re:Too many PhDs... (Score:3, Interesting)

        by demachina ( 71715 )
        If you look at Google's org chart [google.com] 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.
        • Firing Brian Reid [excite.com] wasn't too bright either.

          • Re:Too many PhDs... (Score:3, Insightful)

            by demachina ( 71715 )
            Your link doesn't seem to work. Here is Here [rankforsales.com] 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.
    • GMail iirc, was still in beta. Perhaps they just figured that it was a scratch name they weren't sure if it would hold or not. Although, it does seem rather silly that they wouldn't register it, there are reasons for them not to have.

    • 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.

      • A) Google is already using it in interstate commerce. The fact that they're not charging money for it, and they're calling it a "beta" does not mean it isn't commercial. In the context of a company going public, it's inherently commercial.

        B) One can file an "intent to use" registration before actually going public with the name. That's specifically to allow businesses to secure a brand name with trademark protection before they announce it to the whole world.

    • *Scratches head* I'm not going to go as far as some press has gone and say Google's been botching the IPO

      I would. First the Playboy article, then this?

    • Geek fandom aside, you don't launch a product (even a beta) and not grab the name. What did they *think* would happen?

      My guess is they were NOT thinking, just as they weren't when they put in motion the froogles fiasco.

      Or when they dropped people in Serbia and Montenegro from their Adsense program because of sanctions that didn't exist.

      Sure, their engineers might be educated and extremely brilliant. But who the heck hired their incompetent lawyers? They're not just botching the IPO, they've been botching

    • I'll go that far, given all of the time they've had; they've essentially botched the IPO. I mean, for fuck's sake,they've been going after people with google-alike names; it's not as if they're totally ignorant of domain squatters, etc.

      It's done, stick a fork in it. Google has offically jumped the shark.

  • the early bird gets the worm (Score:3, Insightful)

    by night_flyer ( 453866 ) on Saturday August 14, 2004 @10:23AM (#9966992) Homepage
    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

  • This is easy. (Score:2, Interesting)

    by alarocca ( 683961 )
    Gmail isn't that good of a name any ways. They can just call it google mail. mail.google.com is that so hard?

    • Re:This is easy. (Score:3, Interesting)

      by allism ( 457899 )
      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.
      • it's that thousands of people are already using @gmail.com email addresses.
        For a *beta* service. Did you not expect that something might happen and that address might not get yanked at some point?
        • How many years has ICQ been in beta? I know it's not the same thing, but I don't think any of us expect our UINs to vanish from underneath us.
      • I was seriously considering dropping my email account through register.com and switching everything to gmail

        Do what I do -- forward all your mail to your Gmail address.

    • Re:This is easy. (Score:3, Insightful)

      by elucubra ( 685819 )
      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.

  • Easy Solution! (Score:4, Funny)

    by blue_adept ( 40915 ) on Saturday August 14, 2004 @10:25AM (#9966997)
    rename G-mail to G-spot. Fits in nicely with their new playboy image as well. ;)

  • Cybersquatting? (Score:5, Interesting)

    by Daniel Boisvert ( 143499 ) on Saturday August 14, 2004 @10:26AM (#9967003)
    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.
    • Would you mind posing a link to a site that uses Gmail, please? I'm not doubting you, but I need to see a link.
    • "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"

      Perhaps we can finally setup a gmail.webservices.tm.us domain name, so these people can stop squabbling over the "US trademark means you get the .com name" fallacy, which conveniently ignores the sheer number of people who can all have the same trademark and end up fighting over domains...

      Not that it matters in google's case, because gmail.google.com is in th

    • Re:Cybersquatting? (Score:3, Interesting)

      by allism ( 457899 )
      OK, here's something interesting - google has had gmail.com registered since 1995 [register.com]. Who is considered 'first' in this case?
      • Trademark isn't like patents just being first isn't enough.
        IANAL but if multiple companies have been using the term gmail for an extended period of time, with nobody claiming and defending ownership, then it has become generic. So it is possible that nobody gets the trademark.
  • Its a business, if they didnt think of doing that first, they are fools..

    • Only in a cutthroat business world where red-tape allows unrightful owners to pounce on the name and the possibility of making money off a name which, previous to GMail's launch, did not need or want.
    • Yes, they are fools. Between this and the other mistakes they are making, I have serious questions about their ability to run a business legally. I wonder when they're going to come out and say something like "Ooops, you mean revenue and proft are different?"

      And regarding your sig:

      ------ What part of "the right of the people to keep and bear arms, shall not be infringed" do you not understand ----

      The part I do not understand is the part you conveniently left out.

      From constitution.org [constitution.org]:
      In a report on th

  • Google will probably prevail (Score:3, Informative)

    by ScottSpeaks! ( 707844 ) * on Saturday August 14, 2004 @10:33AM (#9967024) Homepage Journal
    (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.
    • 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?
      • 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.
    • 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.
  • 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.
    • Assuming they get to keep "gmail.com," which is what all the email addresses are. And given that a lot of people use Google to archive the mailing lists they subscribe to, changing that is nontrivial.

      (Of course, if they retained the same usernames and just swapped the domain name, some of us mailing-list providers would just search-and-replace. But I rather doubt YahooGroups would, nor all the little one- and two-list places that people might be subscribed to.)

  • Gotta love the unbiased reporting on slashdot (Score:4, Insightful)

    by Jason1729 ( 561790 ) on Saturday August 14, 2004 @10:37AM (#9967040)
    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.

  • This seems epidemic at Google (Score:5, Interesting)

    by maelstrom ( 638 ) on Saturday August 14, 2004 @10:38AM (#9967043) Homepage Journal
    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.
    • Maybe you haven't been out of college long enough to notice, but every company is a collection of screw ups. Bear in mind that the people that organized your travel and your visit are likely administrative staff that are not well paid. They are not managers or executives. For low pay, you get low quality. You'll find that in all companies.
      • Well my current employer seems to have solved this problem, and the hijinx that I did not go into directly involves upper management.

      • For a company that has millions in cash lying around and realizing that attracting people is their key corporate goal, I think the screw ups are a bit higher up.

        They don't even have a group scheduler? Email for communication? A simple task list?

        No one in the company should be of low quality. They might have lost a person that could have given them their next million dollar idea. This is not a "whoops we ran out of pens" situation.
    • It's an achademic culture at Google. They have no business sense.

    • Re:This seems epidemic at Google (Score:5, Funny)

      by rs79 ( 71822 ) <hostmaster@open-rsc.org> on Saturday August 14, 2004 @12:35PM (#9967661) Homepage
      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.
    • 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 ont
    • How can you reserve someone an airfare and not reserve a hotel room for that? Even the secretaries where I work (who do that for visiting professors/speakers/etc) don't mess that up much, from what I know of how that stuff is handled. Google should have paid for you since by the time they called you, the trip was uncancellable. Did they? I hope you raised enough of a fuss to get that part of your money back, too. (I bet just one e-mail isn't enough...) If a secretary screwed up that badly, the secretary sho

  • It's not who registers first (Score:5, Informative)

    by Ivan Karamazov ( 657617 ) on Saturday August 14, 2004 @10:39AM (#9967047)
    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.
    • >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.

      Read the article, the companies have been using the term this way before Google.
    • 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.

      Yes, but if they both get a trademark that could still lead to domain disputes.

      McDonald's doesn't really have much in the way of Internet services, but that doesn't mean somebody can trademark McDonald's email and ask for the domain to be forcibly taken away from the restrauant chain...

  • MINE MINE MINE (Score:5, Insightful)

    by Crashmarik ( 635988 ) on Saturday August 14, 2004 @10:39AM (#9967048)
    Anyone else notice the similarity between the way the legal profession operates and the way 2 year olds behave
    • 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

  • Denied... (Score:3, Informative)

    by dmayle ( 200765 ) on Saturday August 14, 2004 @10:41AM (#9967055) Homepage Journal

    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...

    • Re:Denied... (Score:3, Insightful)

      by DAldredge ( 2353 )
      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!
      • It doesn't seem to me like they were using it for a public e-mail service. E-mail service isn't the same as a newsletter that goes to a limited group of people, etc. That doesn't seem "close enough" to the current expectation among people I know that "gmail" means "web-based email service run by Google". So ... they might have a case. I'm not a lawyer, but that's what it seems like to me.

  • The usages are different (Score:5, Insightful)

    by optimus2861 ( 760680 ) on Saturday August 14, 2004 @10:46AM (#9967073)
    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 [nissan.com])

    • They all use it in the form of using Internet technologies to provide access of services to the public.

      The USPTO just has to approve the first one and it become a legal mess for Google.

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

  • Tried and True (Score:4, Insightful)

    by Mr_Blank ( 172031 ) on Saturday August 14, 2004 @10:46AM (#9967074) Journal
    News stories like this [slashdot.org] and this [slashdot.org] 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 [wikipedia.org]: 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.

  • Trademark Law (Score:5, Informative)

    by LawGeek ( 104616 ) on Saturday August 14, 2004 @10:46AM (#9967078)
    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.

    • Australian domain law is first-come, first-served also. If you meet specific requirements of registration and you're first, then it's yours.

      • Australian domain law is first-come, first-served also. If you meet specific requirements of registration and you're first, then it's yours.

        Google already has the domain "gmail.com". We're talking about registering the TRADEMARK.

        • FYI (Score:2)

          by antic ( 29198 )

          No shit. I was talking about similarities with the "first come, first served" system.

  • Why not Goomail? (Score:3, Funny)

    by Dan East ( 318230 ) on Saturday August 14, 2004 @10:55AM (#9967111) Journal
    Gomail is probably already in use, but Goomail is more fitting I think.

    Dan East
    • Personally I would just go with Gemail, for "Google email". Just so happens you pronounce just like Gmail anyway. ^^

  • Check out the Wayback Machine (Score:4, Interesting)

    by fname ( 199759 ) on Saturday August 14, 2004 @10:56AM (#9967113) Journal
    Looks like gmail.com has been through a bunch of iterations [archive.org]. 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.

  • Gmail.com WHOIS Info (Score:2, Interesting)

    by Anonymous Coward
    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
    St
  • 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 [slashdot.org] saga.
  • 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.
  • 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.

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