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Google faces fight for Gmail

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Stefanie Olsen CNET News

Published: 16 Aug 2004 09:00 BST

In another for the "whoops" file, Google risks losing trademark rights to the name of its Web-based email service, Gmail.

The search giant is fourth in line to be considered for ownership of the trademark name, Gmail, according to filings with the US Patent and Trademark Office. Because the office considers applications in the order they were filed, Google could be forced to change the name of its email service in a worst-case scenario.

Google doesn't think that will happen. "We are confident in our right to use the trademark Gmail," Google spokesman Steve Langdon said.

The announced Gmail on 1 April with much fanfare and registered the trademark six days later. But between 30 March and 7 April, three other parties filed for rights to the name, and they could be considered beforehand.

Google has mentioned the possibility of losing trademarked names for various products in its IPO prospectus under "risk factors."

"We have also been notified by third parties that they believe features of certain of our products, including Google WebSearch, Google News and Google Image Search, violate their copyrights," according to the filing with the US Securities and Exchange Commission. "Our unregistered trademarks include: AdSense, AdWords, Blogger, Froogle, Gmail, I'm Feeling Lucky and PageRank."

Google is facing many challenges on the eve of its scheduled initial public offering. The company opened bidding for its shares Friday and expects to price the stock next week, within a range of between $108 and $135. But as the date approaches, several slips have occurred.

In one example, Playboy magazine released an issue featuring a lengthy interview with Google co-founders Larry Page and Sergey Brin, a media event that could cause the SEC to delay the offering. Google revised its IPO prospectus on Friday to add the article, arguing that the interview should not have violated its mandatory "quiet period." The company also recently gave details about a recision offer for shares it failed to register with the SEC in the last three years.

Murky details about the unorthodox, Dutch auction-style IPO also have cast doubt about investor demand.

Among the three parties that registered for the Gmail trademark was a company by the name of Cencourse, which filed on 31 March. Cencourse's service is for the "delivery and storage of messages, data and information by electronic transmission over the global computer networks and mobile phones."

Precision Research filed for rights to Gmail on 2 April. It claims to have a service for transferring email messages for groups of two or more people by means of a global computer network. Shane Smith, chief executive of Independent International Investment Research in London, registered the name the following day.

The Gospel Music Association, of Tennessee, filed to register GMAil on 8 April, to represent its email newsletter about Christian and gospel tunes.

InternetNews first reported the story.