The product name Unity is at the center of a trademark dispute in the data storage industry between Nexsan and EMC.
Nexsan Technologies filed a complaint against EMC on May 6 in the U.S. District Court in Massachusetts claiming it has priority to the Unity trademark and is not infringing upon any trademark rights that EMC may assert.
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The lawsuit came less than two weeks after both companies orchestrated major product launches around Unity product lines. Nexsan, a wholly owned subsidiary of Imation Corp., issued a press release on April 26 for its new Unity storage line, combining NAS and SAN storage and enterprise private-cloud file system synchronization.
On May 2, EMC launched its all-flash Unity mid-range array at EMC World, providing unified block and file storage. EMC said it would also offer a hybrid version of Unity with hard-disk drives.
In its May 6 lawsuit, Nexsan noted that it filed trademark applications for the terms “Unity” and “Nexsan Unity” on March 22, 2016, with the U.S. Patent and Trademark Office (USPTO). Nexsan said EMC did not file trademark applications for the “Unity” and “EMC Unity” marks until more than a month later, on April 29.
In an email to Nexsan dated April 29, EMC Intellectual Property Counsel John Hurley noted that Nexsan had filed two trademark applications, but he claimed Nexsan had filed “no amendment to allege use” in support of either application.
Hurley wrote that EMC first used the mark “Unity” for an extension of its VNX product line more than a year ago in customer presentations. He claimed a presentation to a customer and large reseller on March 19, 2015, and at least three more customer presentations in that month alone.
In the April 29 email, Hurley asked for Nexsan’s immediate agreement to:
–“Expressly abandon” its trademark applications with the USPTO for “Nexsan Unity” and “Unity.”
–“Not use any UNITY mark for goods or services related to EMC’s UNITY goods and services.”
–By May 6, send a copy to EMC of its submission to the USPTO to withdraw or abandon its two Unity applications.
“Based on EMC’s senior use of its UNITY marks, we believe Nexsan does not have the right to use UNITY as a mark on similar goods and services,” Hurley asserted in the email to Nexsan.
Hurley added: “EMC reserves the right to commence legal action without further notice in the event those applications proceed toward registration and/or Nexsan initiates use of any UNITY mark in connection with similar goods or services.”
Noting that EMC “threatened suit,” Nexsan filed its lawsuit against EMC on May 6, claiming that EMC had not used the EMC marks “in commerce for services” since 2015, as Hurley claimed.
“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,” determining if Nexsan filed its application before EMC used its mark in commerce, under the requirements of U.S. trademark law, said Lisa Tittemore, an attorney at Boston-based Sunstein Kann Murphy & Timbers LLP, the firm representing Nexsan.
Nexsan CEO Bob Fernander said the company has no intention of dropping the name Unity. He 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. “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 EMC’s Unity product after the product launched. “We got a call from a reseller of ours who said, ‘Hey, do you guys realize that EMC just launched a product that’s the same name as yours?’ ” he said.
Nexsan conducted a poll via Survey Monkey among employees to select the name of its new Unity product, according to Fernander. He said employees had to choose among a list of potentially suitable names.
Would Nexsan consider a settlement? “Anything’s possible,” said Fernander, “but right now, I represent a group of shareholders for Imation and Nexsan, and it’s my job to protect their interests.”
EMC has yet to respond to Nexsan’s lawsuit in court and declined an interview request, saying it does not comment on pending litigation.