Zoom Video Communications Inc. has filed for trademark Zmail in the US and in the EU. For many, Zmail looks and sounds a lot like Gmail. It is not known yet (at least to public) how Google will react to it. Will they oppose the use and registration of Zmail?
In the meantime, if Google opposes the Zmail trademark, here are some points that are relevant in considering their similarity.
The similarity of marks is compared visually (how do the marks look), phonetically (how do the marks sound like when said out loud) and conceptually (what’s the meaning of the marks). The similarity is based on the “overall impression” given by the marks, giving more attention to distinctive and dominant parts of the marks.
When the marks contain an identical non-distinctive element, the following general rule applies:
The assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. It will take into account the similarities/differences and distinctiveness of the noncoinciding components.
The coincidence of the non-distinctive element will normally not lead to a likelihood of confusion if the distinctive and dominant elements are clearly different. However, there can be likelihood of confusion if the non-coinciding elements have a low degree of distinctiveness or have an insignificant impact on the overall impressionof the marks, or if the overall impression of the marks is highly similar.
Essentially, the questions if how much weight in these circumstances should be given to letters G and Z in the beginning of the marks. It is possible to register single letters as trademarks in the EU, but very often in practice they are found non-distinctive.
If the letters G and Z are considered distinctive for email services (as they probably could be), then the first hurdle is probably cleared and the final question is whether they have significant enough of a role in the marks so that the overall impression of the marks is highly similar or identical.
In the present case, there is at least one argument to support each outcome. The fact that the non-coinciding element is at the beginning of the mark favours the view that the overall impression is dissimilar. Consumers typically place more emphasis on the beginning of the mark. The argument favouring similarity is that the non-coinciding element is only one letter in each mark, whereas both marks are 5 letters long each. According to this, the impact of this one letter on the overall impression is small and the mark accordingly highly similar. In most cases, if one compares two trademarks consisting of five letters each, the difference of only one letter, especially if it is in the same place in each mark and the different letters are both either consonant or vowel, the overall impression is very similar. This could be the case here as well.
If Google opposes the Zmail trademark applications, it will be for USPTO and EUIPO to decide. It is also possible that the outcome is different in each country. For example, the phonetic similarity is much stronger in the US the letter “z” is pronounced “zee” (/ziː/). In other words, letters G and Z are phonetically very similar in the US pronunciation.
It is not optimal for Zoom if they have to launch Zmail under different brands in different countries. In that case, they could maybe get some consultation from Google, that had to operate Gmail as Google Mail in many countries (such as Germany) before they manage to clear trademark disputes.
Reputation of Gmail
If trademarks Gmail and Zmail are sufficiently different so that there is no likelihood of confusion, Google could still try to oppose the use and registration of Zmail based on Gmail being a “trademark with a reputation”. Trademarks with reputation get stronger protection than “normal” trademarks.
The owners of trademarks with a reputation can prevent the use and registration other marks even if there is no likelihood of confusion, provided that:
- there is a link between the marks (roughly, some similarity)
- the use of the later marks would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark
- there is no due cause (legitimate reason) for the use of the mark
The link between the marks is established when the later mark creates an association to the earlier mark, i.e. brings it to mind. If Zmail brings Gmail to mind (even without confusing them), this hurdle is satisfied. Unfair advantage means the exploitation and free-riding on the coattails of a famous mark. Detriment to the distinctive character or reputation could be dilution of the strength of the earlier mark or devaluing the image or the prestige of the mark.
Even if these hurdles are satisfied, Zoom could argue that there is “due cause” for the use of the mark. Zoom could argue that the word “mail” is generic word for email services, so it has a “due cause” to use it in the mark. This type of argument is often rejected, although there has been instances where it has been accepted as well. If Google opposes the registration of Zmail in the EU, this will very likely be one of the decisive questions.
What else does Zoom’s filings reveal?
A closer inspection of Zoom Inc.’s filing shows that they claim “priority” from a Jamaican trademark ZMAIL that was filed on 14 July 2022. So what’s that about, why did they first apply for the trademark in Jamaica? For an explanation of the concept of priority, see here.
Why on earth Jamaica? In the large scheme of things, it’s probably not a very important country for Zoom. The most likely reason is that the Jamaican application would not pop up in media or even some commercial trademark watches giving them time to prepare the launch. Jamaica does not have an online trademark database that is available to the general public (at least not very easily). By applying for the trademark in Jamaica, Zoom was able to make a “preliminary reservation” of their rights globally and continue with the preparations of launching the brand in secret. This application was very likely picked up by Google’s trademark watch for their mark Gmail. It is likely that Google was aware of the Jamaican application already last summer.
It remains to be seen if and how Google reacts to these trademark applications, and in case they decide to block them, how USPTO and EUIPO will decide the matter. Also, it will be interesting to see if the use of Zmail is blocked in either US or EU, and whether Zoom will then make a uniform brand (Zoom mail or something similar) for both areas.