Google Looses on GMAIL "TM" The Scoop: http://www.searchen.com/forum/t454-google-has-lost-tm-battle-for-gmail.html
I didn't see anything in what you posted about an appeal - while the first company filed three days ahead of google, it matters on who actually used the name first. It takes 6 years for a trademark to become uncontestable. About one year for review and publication, and then the 5 year period of contestibilty starts. This just looks like it was approved for publication- meaning the 5 years is just starting. It's a blow to google because it means the initial examiner has given his opinion that they were not the first to use the name, but google can appeal this and is many times overturned. They won't be able to claim the trademark has "incontestable" status for another 5 years. Google could also purchase the rights if they should lose. Google's legal department must believe they have some grounds or they would never have gone through the process to begin with. It's somewhat odd that both filings were within days of each other.
I thought I had heard a few weeks ago that they were changing the name... Maybe this is why... I forget what the reason was, but if I remember I will post it...
Google did not lose the Gmail trademark and Censourse has not been granted the Gmail TM. Google was the second to apply for the trademark so their application was suspended in April and they must oppose the Censourse application (essentially the Trademark Office merged 2 identical cases). The Censourse application "has it's paperwork in order" will soon be at the stage where it is opened for opposition. This will be Google's chance to make their case that they should have the trademark. The long and expensive legal battle is just beginning ...and IMHO Google is the likely victor.
Correct. When you apply for a trademark, you state when you first started using the mark. The application date doesn't matter, it's proving who used it first. Someone can claim they were using it for 5 years, but many times they are incorrect or downright dishonest. This is also similar to an IPO, where information can leak out and someone can jump in and try to profit on it. You always have people who have advance, non-public, information and try to profit on it. Having a trademark establishes "in stone" a usage date, but it can still be pre-dated by someone else provided they can prove it. I have a trademark that someone filed for 2 years after I had been published. They were lying about usage and couldn't provide a single piece of proof that it had been used before. What they did was started using the trademark without even checking and then discovered there was a filing on the mark- so they fabricated an earlier usage date to avoid having to change their name. Google went forward with using the name even knowing the other company was claiming prior usage. Google must feel they have a strong case or they wouldn't have spent so much money branding the name. It doesn't mean they will win, but my money would be on them. This is why is so important to spend the money on a trademark/servicemark BEFORE you try to trademark a name. If someone else is already using the name, you should forget about it. The internet has made it a lot easier to do a search, but some smaller businesses still won't show up. About 15 years ago, I had a friend whose wife had a tiny dress shop and all of a sudden received a letter from a law firm offering to buy her name. My friend recognized the firm as being one of the most expensive in San Francisco- and one that specialized in intellectual property rights. Had it not been for the law firm, he would have taken $5K for the name, but figured some heavy hitter must have hired the firm. It turned out that one of the premier specialty clothing chains had developed a concept store that was going to open in a matter of weeks, and one of the executives had just happened upon my friends store while on vacation- with the same name. They wound up paying $100,000 for the name (which was a good amount of money 15 years ago). As it turned out, they only opened one store in SF and it did so poorly they abandoned the idea.
It really depends on several factors. Is the use of the name likely to be confused with the other business? Did the other company file in more than one classfication or is it a servicemark? For instance, IBM filed in all the classifications, including jewelry to have widespread protection. Most people would assume "IBM jewelry" is much different than the "IBM" computer related company, but in this case it would clearly be infringement. If "Apple" (the computer company) had only filed in one classification, you could probably use the name "Apple" for a T-shirt company. If your t-shirt company had printed phrases that were aimed at computer nerds, well then you could have problems. It's not black and white, but generally speaking, a trademark in one classfication does not extend to other uses.
this is definitely an interesting issue BUT a simple name change is all that is needed. googlemail.com sound doable?!?!!
Yea but all this talk of gmail... it will hurt them some no doubt. Kinda like the WWF going to WWE. It just doesn't feel right
But do keep in mind you would not have problems with Apple Computer Comany. You would have to deal with the owner of that mark, which is not Apple, but the Beatles