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August 14, 2004

trademark registrations matter: a cautionary lesson

Trademark registrations do matter.  I often have clients (and law students) make the argument that since trademark rights are created upon use of a mark in interstate commerce, there is no need to file a federal registration and/or counterpart foreign registrations.  The argument I usually counter with is that statutory damages are available for federally registered marks as well as nation-wide notice and protection of any acquired rights. 

I now also have a poignant story that makes the case as well: Gmail.

The internetnews.com has an article that outlines an astonishing problem that Google is facing: someone else may receive the federal registration on Gmail.

While news of the beta launch of Gmail, Google's free Webmail service, thrilled the public, it sent a few companies running to the U.S. Patent & Trademark Office to stake their claims.

According to USPTO records, Google's March 31 news inspired a bit of a land rush, with four other companies filing applications to set their claims in stone.

The news is the latest in a series of missteps that have come to light as Google's IPO approaches. The Mountain View, Calif. search provider expects to raise as much as $3.3 billion in its initial public offering, with trading expected to start the week of August 16.

Google has made multiple revisions to its prospectus, but still has not disclosed that it may not be able to continue using Gmail. The IPO prospectus clearly states, "Our unregistered trademarks include ... Gmail ...."

From Slashdot:

This might be a very sticky issue because USPTO Trademark Administrator Sharon Marsh says 'The application process is first come, first served. Applications are processed as they're received, and the person second in line will get a refusal of registration from our examiner.' All of which means that between Google's delay in applying for the trademark, the other organizations' attempt at what can only be called cybersquatting, and the USPTO's bureaucracy, Google could well be denied the use of Gmail as a trademark."

This is quite a "sticky situation" -- Google may not be able to obtain a broad Federal Registration on the mark Gmail.  I qualified that last sentence with the term "broad" because it is possible that Google will prevail on a registration covering the use of the Gmail mark on its email service concurrent with other registrations of the mark for other goods and services.  I wouldn't think this would be an ideal situation -- without the broad mark, Google's ability to move outwardly from their original goods and services may be constrained.  At the very least it puts a cloud on Google's ownership of key (perceived) intellectual property.

Trademarks may be more valuable than a patent (i.e. Coke, John Deere green, etc.) yet they are often looked and viewed as the "not as important" intellectual property. 

Add in Google's troubles with the Froogle trademark, and you wonder, as internetnews put it: "Maybe next time, Google should google before it chooses a name." If Google can fall into this trap, anyone can.  How long do you want to bet before we start hearing: "they got Gmail'd"?

For other resources on this story:

The Serach Engine Marketing Blog
Tech Law Advisor
MarketingVox

Posted by Douglas Sorocco at 03:14 PM.
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