The company that recently won the rights to the GMail trademark in the UK has taken its case Stateside. And if Independent International Investment Research (IIIR) is successful claiming its stake to GMail in the US as well, your @gmail.com address could change to @googlemail.com instead.
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| Google: The British Are Coming For GMail! |
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Late last month,
IIIR filed a
petition with the US Patent and Trademark Office (USPTO) to cancel Google's ownership of the GMail trademark, alleging the company had
improperly acquired their application for it in 2004.
When Google noticed their application for GMail was submitted four days after IIIR's, the Mountain View, Calif.-based company bought an earlier application, dating back to the late Nineties, from
Precision Research, Inc. Based on that earlier application, the USPTO granted GMail to Google.
But Shane Smith, Chairman and CEO of IIIR, claims that application was "worthless," as Precision Research's GMail product had been abandoned at the time the application was filed. Smith says that one of the requirements to obtain the rights to a trademark is to prove that the mark is currently in use. IIIR is prepared to argue that it wasn't.
"We have some quite serious doubts as to whether the trademark was in use at the time," Smith told WebProNews. "We suspect it wasn't. We think it was quietly dropped before the application was made."
If so, says Smith, Google bought something knowingly or unknowingly that was not legitimate. In the complaint itself, IIIR alleges Precision Research knew it was not legitimate when they sold the application. Smith says the ball is now in Google's court to prove they acquired the application properly.
"Google have made a monstrous mess of their intellectual property requirements around their GMail product," said Smith, citing
trademark troubles in several
countries, including the one involving his own company in the UK. "They must have given absolutely no thought at all to their product."
IIIR launched their GMail product in the US in 2002. The "G" stood for "Graphiti," a combination of "graphics with integrated text intelligence." A subscription service offered through the their website, it was intended to allow stock brokers to incorporate IIIR's equity and currency data for investment banks.
"Our product was stopped in its tracks in 2004," said Smith, referring to when Google launched GMail. "We've had to completely drop a product line."
Smith confirmed that if the USPTO granted IIIR the GMail trademark, the company would seek monetary damages from Google based upon the value of the mark. According to a press release on the company's website, the GMail mark is valued between $48 and $64 million. IIIR will not, however ask for transfer of the gmail.com domain, only that Google change the name of its email service.
Smith says Google has refused to negotiate with IIR since 2004, and cites the recent dispute between Apple and Cisco over the term "iPhone" as an example of how "responsible companies" handle situations like these. That dispute was settled in a matter of weeks. Instead, he says, Google has been "flexing financial muscle" by tying up the case in court.
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About the author:
Jason Lee Miller is a WebProNews editor and writer covering business and technology.
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Comments
Looks like the USPTO may be
Looks like the USPTO may be moving in favor of www.iirgroup.com in the GMAIL TM debacle. Would be a blow for google if this is the case but the latest ruling shown in the USPTO filings certainly tips the scales in IIR's favor IMO.
Thoughts ?
IIIR was even later in the
IIIR was even later in the game .. Ali G had a service called gmail from even before their product. "G" representing the slang for "homie", "bro", "dude" etc.
Example: "Yo nigga, wut yo G mail?"
latest TM info
If you want to track this dispute see the USPTO link below, google have recently responded to IIIR's cancellation petition & I have to say their argument looks very weak at best.
http://ttabvue.uspto.gov/ttabvue/v?qs=78395746
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 ?
See below an extract from a
See below an extract from a recent trading statement made by IIIR, looks like they have plans to escalate the issue in the public arena.
When google offered a settlement before IIIR was going through difficult times yet still declined to settle as they have integrity. Now despite googles actions meaning they closed down a whole product line they are going from strength to strength.
-------------------------------------------
"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."
If this company owns the
If this company owns the trademark then fair enough. Why doesn't google (who controls the domain) ofer to buy it legaly? Or else, if the second company insists on using the domain gmail.com itself it should offer to redirect emails addressed to .gmail.com to a corresponding .googlemail.com address. They won't win any friends making thousands of users change their email adds.
I've heard of IIIR
I am a shareholder in IIR so have obviously heard of them, 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.
As you have been through
As you have been through such an experience you should be able to understand the stance that IIR have taken.
Remember IIR began using GMail in the US in 2002 way before google launched GMail, a simple search by googles TM lawyers would have turned this up but they choose to ignore.
IIIR had first use in commerce so the TM shoudl be theres. Google also launch their own cancellatin petitions you know, eg they have one know to cancel a AUTOOGLE mark on the grounds its confusing...now thats just being paranoid.
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