Google Responds To GMail Trademark Dispute

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Addressing a petition for cancellation of the GMail trademark in the US, Google responded to the US Patent and Trademark Office that International Independent Investment Research’s application for the trademark was invalid from the beginning.

In January, Britain-based IIIR filed the petition for cancellation accusing Google of improperly acquiring an application for the GMail trademark predating IIR’s application from Precision Research Inc. IIIR argued Precision Research’s GMail product was not in use at the time.

The petition followed a recent victory in England, where Google voluntarily changed the name of the UK GMail service to GoogleMail until the dispute was settled. IIIR claims its GMail product was in use two years before Google’s in the UK, and that they launched it in the US in 2002, but it was squashed when Google launched its own product.

The Mountain View, Calif.-based search giant responded to the claims saying IIIR failed to meet statutory requirements of the application process, making their application "void ab initio," or from inception.

Google trademark attorneys James L. Vana and Matthew D. Schneller also argue that IIIR falsely stated that it had "a bona fide intention to use the G-Mail mark in the United States.

"Since each of these applications are invalid," said Google, "Petitioners do not have standing to challenge the Registration on those bases."

In a regulatory filing with the British government, IIIR mentions the ongoing dispute with Google, calling the company’s stance on intellectual property "indefensible."

From that filing:

Meanwhile regarding the ongoing dispute with Google over its use of the Gmail mark, for which the Group has prior pending trademark applications, the Board notes that its criticism of Google’s use of third-party intellectual property is now being echoed by much larger software, technology and media companies such as Microsoft, Viacom and CBS.  

Microsoft General Counsel Thomas Rubin, in particular, has accused Google of "systematic copyright violation".The Group increasingly believes that Google’s stance on intellectual property is indefensible and expects to announce shortly an initiative to raise the profile – with investors, advertisers, users and regulators – of Google’s approach to intellectual property. The Group re-iterates its commitment to protect Group intellectual property.

Commentators on the previous story express both disbelief at Google’s response and sympathy for IIIR. Said one anonymous poster:

 "They don’t even seem to think that IIR used GMail in commerce in the US prior to 2004, a simple check reveals that it was launched in 2002 – surely their team of 14+ TM lawyers could have found this out?"

Another commentator, claiming to be an IIR shareholder, echoes the company’s complaints in the regulatory filing:

"I think we are doing the right thing protecting our IP from a company that has no regard for TM rights. As a public company they are simply doing what is best for their shareholders which is there responsibility at the end of the day."

Google Responds To GMail Trademark Dispute
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  • Anonymous

    I’m pretty sure your facts are completely wrong. After google announced the launch of their GMail service, the people at IIR went and applied for a trademark on GMail in the UK and the US. The UK patent office has not awarded any trademark to anybody yet nor has any court in the UK. Google was asked by IIR to stop using the term and they voluntarily agreed for the time being while the patent office makes a decision. In no way is that a concession. The GMail term was used way before IIR by the people at Garfield.com as their free email service which is where google bought the domain from.

    • Jason Lee Miller

      thanks for bringing that detail to my attention. though my facts are not "completely" wrong, there was one inaccuracy early on in the summary of events leading up to, which has been corrected.

      • Guest

        According to the USPTO office updated today the cancellation has been withdrawn so these guys must have finally settled.

    • Anonymous

      A number of clarifications are needed here. Note first that IIR’s dispute with Google is about trademark rights, not domain name rights. The purchase of the Gmail domain from Garfeild is therefore not the point of contention.
      Second, trademark rights can be established through commercial use (“exploitation”) – which is what IIR has been doing since 2002. Registration of those rights – which IIR did in 2004 – helps to protect the rights gained through comercial use (which began in 2002). Neither IIR nor Google registered their rights prior to launching their Gmail products – not so surprising for IIR (a small company with limited resources) but astonishing for Google.

      Third, IIR has made no application to the UK patent office. The UK, as part of the EU, is covered by IIR’s application to OHIM, the European body responsible for these things. Note that while IIR’s case has yet to be ajudicated, Google’s has already been rejected. Google is now forcing an appeal.

      Fourth, Google did not stop using the Gmail trademark in the UK in 2005 in response to being “asked”. Google was asked by IIR some 18 months earlier, soon after Google announced Gmail in April 2004, to change the name – a request that Google ignored. Google changed the name some 18 months later only after substantial pressure – generating very unwelcome legal costs for IIR, and after the damage had been done.

      It is astonishing that Google, rather than recognising the rights that various parties in Europe have, chooses to heap upon them the additional cost of a legal dispute to add to the damage already inflicted on the businesses of those respective rights holders. Helping yourself to whatever intellectual property you like, and backing off only when forced through court to do so, is simply not right. Unfortunately Google seems to be enthusiastically embracing this modus operandi – spot the pattern emerging acrross its approach to trademarks, film copyright (using free content posted without permission from Viacom, NBC etc to generate YouTube traffic) and book copyright (scanning works without the consent of the author).

      • Neil

        Whats the next stage of the process now that google have answeared the TM cancellation application ?

        Surely by now & after 3 years of discussion IIIR have provided google with adequate evidence that GMail was being used by then commercial in 2002 ?

        A.N.Other shareholder

      • http://www.4Me2Wear.com 4Me2Wear.com

        I’m finding myself in disagreement with the clarifications:

        "first that IIR’s dispute with Google is about trademark rights, not domain name rights.";

        As I read it, Garfield.com was purchased, not Gmail the domain. Gmail appears to be a *product* of Garfield.com, and thus it *is* the point of contention.

        "second…Neither IIR nor Google registered their rights prior";

        According to USPTO.gov, you must be *using* the trademark in commercial practice to file. If you are not using it, you must file an application with intent to use, and then pay (file) again once you start using it (and notify the trademark office that you have started using it). That being said, most people don’t register "their rights prior" because they have no rights until the trademark is used as a trademark.



  • james

    Looks like a settlement was about to be concluded, then google fire the final shot. Again look fairly weak arguments for a highly paid legal team ;


    Given google lost TM claims in Europe & were prepared to settle by the looks of things in the US they must also beleive there arguments for the GMail TM are weak ?

    • james

      Announcement expected in October according to the company. Or as the broker puts it ‘a conclusion’ is expected.

      • james

        Here is the latest from the USPTO regarding the ongoing David & goliath GMail battle ;


        Looking at the link to the US patents & trademark office it looks like google is close to a settlement with IIR over the Gmail trademark.

  • Guest

    @Guest: Well, IIR had to apply for the trademark; they had already been using the term but Google was going to steal it so there was nothing else to do.

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