The parties to this proceeding have been engaged in active and detailed settlement negotiations and appear now to be close to reaching a settlement….

[Google] recently (only hours before of the filing of the present motion) requested a revised draft agreement from Petitioner’s counsel which will incorporate the remaining terms which had been, but may no longer be at issue.

IIIR requested the 30-day extension to finish negotiating the settlement, rather than respond to Google’s motion for summary judgment that IIIR had abandoned its claim to the Gmail trademark in the US, and also cited time zone differences as a reason for delay.

According to Google’s motion for summary judgment, filed at the end of August, if a mark hasn’t been used for three years, it is considered abandoned.

In that same motion, however, it is noted that IIIR came just shy of the three-year non-use rule. Nonetheless, it appeared Google’s argument was that it was close enough to count.

Perhaps Google has changed its mind about that, as IIIR claims that during the 30-day extension period the two companies will either settle or move on to litigation.

American companies, especially Google, generally don’t respond to request for comment regarding ongoing legal matters, but we should know whether there is a settlement or not by the first of November.

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: The British Are Coming For GMail!

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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