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EMC to Nexsan: We said 'Unity' first

In the latest shot fired in the David-and-Goliath dispute between Nexsan Technologies and EMC over the Unity trademark, EMC claimed it began using the Unity brand name in 2014. The first scheduled court appearance for the lawsuit is less than two weeks away.

Nexsan filed a complaint on May 6 in the United States District Court in Boston, claiming it has priority to the Unity trademark. EMC submitted counterclaims on June 20 alleging trademark infringement and unfair competition. The vendors are scheduled to make their first court appearance on July 14 before U.S. District Court judge William Young.

The battle started in the spring, after Nexsan and EMC executed major product launches for their respective Unity products. Nexsan’s press release hit the wires on April 26 for its Unity storage product, combining NAS, SAN and enterprise private-cloud file system synchronization. Nexsan had submitted applications for the terms “Unity” and “Nexsan Unity” on March 22, 2016 with the U.S. Patent and Trademark Office (USPTO).

EMC filed its applications for the “Unity” and “EMC Unity” trademarks with the USPTO on April 29 – the same day it sent a letter to Nexsan reserving the “right to commence legal action” if Nexsan didn’t stop using the product name Unity and withdraw its trademark applications. EMC launched its Unity mid-range array, combining block and file storage, on May 2 at EMC World 2016.

In its June 20 court filing, EMC claimed it started using the Unity and EMC Unity trademarks publicly more than two years ago in connection with an extension of its VNX storage system. Examples cited in the court document include:

–May 5, 2014: Blog post by Chad Sakac at http://virtualgeek.typepad.com/virtual_geek/2014/05/vnx-architectural-evolution-keeps-rolling-vnxe-3200-project-liberty.html

–March 19, 2015: Unity product presentation to a customer and large reseller. At least three additional customer presentations took place in March 2015, according to EMC.

–Dec. 14, 2015 to March 14, 2016: EMC provided 21 partners and customers versions of the Unity product, “featuring the UNITY marks.” Several of those original beta testers subsequently purchased the products, according to EMC.

EMC also claimed that “at least as early as” May 2014 it “has spent a significant amount of money to advertise” the Unity products. As a result, “purchasers and potential purchasers of data management software immediately associate the distinctive” Unity trademarks with EMC, according to the company’s court filing.

So, if EMC had been using the name Unity for so long, why did the company wait until April 29 to file its trademark application with the USPTO?

EMC declined comment for this blog post, citing a policy not to comment on pending litigation.

Nexsan also declined comment yesterday on EMC’s counterclaims. But, in a May conversation, Nexsan CEO Bob Fernander said he had no knowledge of any 2015 EMC customer presentations in which the term “Unity” may have been used.

“You’ve got to do it publicly,” Fernander said at the time. “And the definition of public is kind of common sense, we think. And your commerce becomes another next step in the process of making it publicly known that you’re using a mark. So we’re scratching our heads on that one.”

Fernander said he first learned of the EMC Unity product when he received a call from a reseller in May, asking him if he knew that EMC had just launched a product bearing the same name as Nexsan’s product.

Lisa Tittemore, an attorney at Boston-based Sunstein Kann Murphy & Timbers LLP, the firm that filed Nexsan’s federal court complaint, said in May, “Priority is based on who uses or files the mark first, so you can have rights based on filing first or based on using first. That’s literally what this lawsuit is about.”

Through its court filing, EMC claimed it exercised valid trademark rights and had priority over Nexsan since its “adoption, promotion, beta testing and offering for sale” of its Unity products pre-dated Nexsan’s trademark application filing dates or “any other dates upon which Nexsan could rely.”

EMC claimed, via the document, that Nexsan’s Unity products were not generally available until June 2016 at the earliest and that Nexsan had not indicated it had closed any sales for the Unity system.

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Throughout this battle with the "Unity" brand, I wonder how much the collateral damage will be. 

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