Trademark Woes: Is Gmail in Jeopardy

Gmail, Google's free, web-based e-mail service was launched March 31st and immediately set off a media-frenzy. Offering a full gigabyte of storage and allowing accounts only for those who received an invitation, a Gmail address quickly became a hot commodity to Internet junkies. Web sites sprang up to allow people to auction, trade and flat-out sell Gmail invitations and news stories about Google's latest offering were published on an almost hourly basis.

While Google's launch of Gmail succeeded in driving interest and traffic to the site, their trademark planning left a little something to be desired. Despite launching the Gmail service to the public on March 31st, Google failed to file trademark rights for the term Gmail until April 7th, after three other companies had filed for a trademark on the Gmail term. Since the USPTO office processes applications in the order they are received, Google will have to wait until the USPTO reviews the applications of three prior registrants before having their application considered.

The first company to file for the trademark was Cencourse, a Florida based company that provides global communication and multimedia services. Cencourse applied for a trademark on the term Gmail for services that include the "delivery and storage of messages, data and information by electronic transmission over the global computer networks and mobile phones."

Cencourse was followed by California based Precision Research, a company dealing with the design of high-tech equipment. Precision Research's trademark application claims a first use of the term in 1998 for "transferring of electronic messages for groups of two or more people by means of a global computer network." As the company claiming the earliest first use of the term, it’s possible that Precision Research will provide the most challenge to Google’s use of the term.

Last in line ahead of Google is UK based Independent International Investment Research (IIR), which runs a stock research service called Pronet Analytics. Their filing claims that they have been using the term since 2002 for an e-mail based subscription mailing list for investors, brokers and traders. An additional trademark applications was also listed by the Gospel Music Association on April 8th, one day after Google's application was filed.

So what does all of this mean to Google? Well, it depends on how the USPTO rules on the various applications. Trademarks are designed to protect a mark within a specific line of business, not to provide the undisputed right to use a term or phrase exclusively. If there's enough of a difference in services, a trademark may be issued for the term to more than one company. It's also possible that Google's pockets will prove to be deep enough to allow them to buy their way out of the problem.

It's also important to note that while Google's application is currently on hold, this doesn't necessarily mean that it will be denied. U.S. law defines trademark issues based on a "first use" rule that usually results in the trademark being awarded to the company that can prove they were first to use the term in commerce, as opposed to which company's application made it to the office first. The three applications that were submitted before Google's are only guaranteed to be reviewed, there's no way of knowing yet whether or not the trademarks will be awarded. Additionally, Google (and other companies) would be given the right to challenge any awarded trademark during the "publication" period.

The current trademark issue follows a series of similar problems that have plagued Google since the start of the IPO process earlier this year. Google has also run into trademark issues concerning Froogle, its shopping search engine.