Is the way clear now 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.

Gossamer’s application has the earlier filing date, while Google claims an earlier date of use. In light of the Effigi case, I mused that Google might have to resort to filing a Statement of Opposition against the other GMAIL application (assuming the Examiner’s Report did cite the other GMAIL application against it), prove that it really did have an earlier date of first use and then get Gossamer’s application knocked out.

In a follow-up post I noted that, 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 an extension of time to respond to that report. But since no response was filed (even by the extended deadline) that application was then put in a status of Default. Gossamer only had until February 22, 2006 to file a response to the Default Notice and prevent the application from going abandoned.

The other day, the Trade-mark Office’s online database was updated and I’m again pleased to be able to post on some further developments:

  1. Gossamer’s application has now indeed gone ABANDONED; and
  2. Google has recently requested (and been granted) an extension of time to respond to its Examiner’s Report. It has until September 2, 2006 to do so.

So it looks like at least one hurdle it out of the way for Google to obtain the Canadian Trade-mark Registration to GMAIL.

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