Clearing the way for Google’s GMAIL

In an earlier posting I noted that Google’s Canadian trade-mark application for GMAIL ran into a little bit of a difficulty - because the Canadian Trade-marks Office sent off an Examiner’s Report. I speculated that the Examiner’s Report would have cited the earlier filed application by Gossamer Threads Inc. (also for GMAIL and in relation to web-based electronic mail) against Google’s application.

Google's Gmail

Our Federal Court of Appeal, in the Canada (Attorney General) v. Effigi Inc. case, recently ruled that the Registrar of Trade-marks, when faced with two confusing co-pending trade-mark applications, should adopt a “first come, first served” policy and should no longer consider the claimed dates of first use as a relevant consideration.

In the earlier post I also noted that Gossamer’s application has the earlier filing date, while Google claims an earlier date of use. In light of the Effigi case, I suggested that Google’s only resort (assuming the Examiner’s Report did cite the other GMAIL application against it) would be to monitor the Trade-marks Journal and file a Statement of Opposition to try to prove that it really did have an earlier date of first use and then get Gossamer’s application knocked out.

Today the Trade-mark Office’s online database was updated and I’m pleased to be able to post on some additional developments.

Apparently, just before Christmas (Dec 22nd) the Trade-mark Office sent a Default Notice to Gossamer (because it failed to respond to an Examiner’s Report of its own). Gossamer had even requested a extension of time to respond to that report. But since no response was filed (even by the extended deadline) this application is now in a status of Default.

It looks like Gossamer will have only until February 22, 2006 to file a response to the Default Notice and prevent the application from going abandoned. If it does go abandoned, then the way is clear for Google’s GMAIL application (at least from the prespective of having an earlier filed application cited against it).

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