Benjamin Appelbaum, Attorney at Law

Using a trademark first may not provide protection

Using a trademark first may not protect New Jersey trademark applicants from losing out to a registrant who files first for the mark. In an April federal court decision, the company EMC lost its claim to the trademark "Unity" for software products in data management, despite having given presentations using the name over half a year before another company filed for a trademark.

EMC began using the name "Unity" in mid-2015 on its products, giving 84 presentations to customers, partners and potential customers that included the name for new products. In fact, beta versions of these "Unity" products had even shipped to some consumers by December 2015. All of the customers and partners involved in these presentations and beta access signed confidentiality agreements about the products and their name.

In March 2016, Nexsan, another software company, filed two trademark applications for "Unity" software products with the United States Patent and Trademark Office. Traditionally, the trademark law standard to determine the rightful owner of a mark looks at the "first use" of a trademark and not just the official first filing of the mark.

However, in the Nexsan/EMC case, even giving dozens of presentations to hundreds of customers was insufficient to recognize EMC as the first legal user of the trademark. The use of the trademark in secret seems to have been one of the key factors in granting Nexsan's trademark status, especially as EMC chose not to file a trademark application, perhaps because of its concerns over confidentiality. This case presents a twist on the usual questions of first use in trademark cases that is relevant for future filers.

When companies or individuals are considering filing for a trademark for their new products or ideas, they would be well-served to consult with a trademark law attorney in order to best protect their intellectual property. Legal counsel can provide advice and information about how best to enforce and protect these potentially valuable intangible assets.

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Benjamin Appelbaum, Attorney at Law - Intellectual Property

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