Addressing a petition for cancellation of the GMail trademark in the US, Google responded to the US Patent and Trademark Office that International Independent Investment Research’s application for the trademark was invalid from the beginning.
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.”
