United States District Court, D. Massachusetts
FINDINGS OF FACT AND RULINGS OF LAW
WILLIAM G. YOUNG DISTRICT JUDGE.
issue before this Court is trademark priority. Nexsan
Technologies, Inc. (“Nexsan”) is a manufacturer
and provider of computer data storage, backup, and management
technologies. First Am. Compl. (“Am. Compl.”)
¶ 6, ECF No. 89. EMC Corporation (“EMC”) is
a Fortune 200 company that also develops and manufactures
data storage technologies. Def. EMC Corporation's Answer,
Affirmative Defenses, & Countercls.
(“Answer”) 3 ¶ 12, ECF No. 20. Since the
commencement of this suit, EMC has been acquired by Dell,
2016, Nexsan and EMC each independently launched new computer
data storage systems branded “UNITY.” Am. Compl.
¶¶ 9, 21. The parties dispute which company has the
rights to the UNITY name. On March 22, 2016, Nexsan filed two
intent-to-use trademark applications with the United States
Patent and Trademark Office (“USPTO”), requesting
use of the UNITY and NEXSAN UNITY marks for computer data
storage hardware and software. Id. ¶ 7. Nexsan
claims to have engaged in market research and testing to
introduce its product and the UNITY mark prior to filing its
application. Id. ¶ 8. EMC counters that it
publicly used the UNITY mark first, in connection with its
“VNX” product line beginning in early 2014.
Answer 11 ¶ 14.
brought this action seeking declaratory judgment of priority
and non-infringement of its trademarks against EMC
(count I) under 28 U.S.C. section 2201, and for false
designation of origin and unfair competition in violation of
the Lanham Act, 15 U.S.C. § 1125 (count II). Am. Compl.
parties filed cross-motions for summary judgment on the issue
of priority to the UNITY mark. Nexsan Technologies,
Incorporated's Mot. Summ. J., ECF No. 46; Def. EMC
Corporation's Mot. Partial Summ. J., ECF No. 40. Both
briefed the issue and submitted statements of fact. Nexsan
Technologies' Mem. Supp. Mot. Summ. J. (“Pl.'s
Mem.”) 9, 15, ECF No. 47; Nexsan Technologies,
Inc.'s Mem. Opp'n EMC Corporation's Mot. Partial
Summ. J. (“Pl.'s Opp'n”), ECF No. 57;
Nexsan's Local Rule 56.1 Statement Undisputed Facts
(“Pl.'s Facts”), ECF No. 50; EMC
Corporation's Mem. Law Supp. Mot. Partial Summ. J.
(“Def.'s Mem.”), ECF No. 53; EMC
Corporation's Statement Undisputed Material Facts
(“Def.'s Facts”), ECF No. 54; EMC
Corporation's Resp. Nexsan's Local Rule 56.1
Statement Undisputed Facts (“Def.'s Additional
Facts”), ECF No. 61; EMC's Reply Supp. Mot.
(“Def.'s Reply”), ECF No. 65. By agreement of
the parties, the Court held a case stated
hearing on January 11, 2017, on the issue of
priority of ownership of the UNITY mark. This Court now makes
the following findings of fact and rulings of law.
FINDINGS OF FACT
Nexsan Registered the UNITY Mark in March 2016
January 2016, Nexsan began researching brand names for a
recently developed computer technology. Pl.'s Facts
¶ 7. In polls of Nexsan employees, UNITY was the most
preferred of prospective marks. Pl.'s Facts ¶¶
14-15; Decl. Judy Kaldenberg Supp. Nexsan Technologies'
Mot. Summ. J. (“Kaldenberg Decl.”) ¶¶
13-14, ECF No. 48. On March 7, 2016, Nexsan completed a
trademark search for “UNITY” which revealed that
the mark was not yet used in relation to computer data
technologies. Kaldenberg Decl. ¶ 15; Suppl. Decl. Steven
A. Abreu Supp. Nexsan Technologies' Case In Chief Issue
Priority, Ex. B Part 1 (“Trademark Search
Report”), ECF No. 78-2. Nexsan subsequently filed two
intent-to-use applications for the UNITY mark with the USPTO
on March 22, 2016. Pl.'s Facts ¶ 18; Def.'s
Facts ¶ 33. On April 25, 2016, CRN magazine, an industry
publication, previewed a favorable review of Nexsan's
UNITY products. Am. Compl. ¶ 10. The following day,
Nexsan announced the release of its UNITY line. Id.
EMC's Pre-Market Activities Regarding Its UNITY
Nexsan developed its UNITY products, EMC was developing a
similar computer system to manage data storage. Def.'s
Facts ¶¶ 3-4, 32. Since at least 2015 -- well
before Nexsan's development -- EMC had conducted
activities related to the development and refinement of this
product, which EMC eventually called “UNITY.”
Id. ¶ 3. These activities included giving
presentations about and shipping beta versions of its UNITY
products to customers, partners, and potential customers.
Id. ¶¶ 8-21.
“Virtual Geek” Blog
Sakac (“Sakac”), an EMC employee, maintains
“Virtual Geek, ” a blog that discusses trends in
the “electronic data storage industry.”
Id. ¶ 6. The blog contains a disclaimer stating
that it is personal in nature and not authorized by EMC.
Pl.'s Facts, Ex. K, About Me (“Virtual Geek
Disclaimer”) 1, ECF No. 50-11 (“Content published
here is not read or approved in advance by EMC and does not
necessarily reflect the views and opinions of EMC. This is my
blog, it is not an EMC blog.”).
5, 2014, Sakac published a Virtual Geek blog post titled
“VNX architectural evolution keeps rolling (VNXe 3200
Project Liberty).” Pl.'s Facts, Ex. J, VNX
Architectural Evolution Keeps Rolling (“Virtual Geek
Post”) 1, ECF No. 50-10; Def.'s Facts ¶ 7. The
post describes some of EMC's recent technologies and uses
the word “unity” in reference to some of those
developments, stating, for example, that “[w]e continue
to stress and expand the footprint of the new
‘Unity' code stack in VNXe, ” “with
vNXe, the Unity codebase conversion is complete, ” and
“[t]he Unity codebase in the VNXe is also the right
vehicle.” Virtual Geek Post 2, 4.
employee, Brian Henderson (“Henderson”),
testified that he first became aware of EMC's UNITY
product via Sakac's blog post. Def.'s Facts, Ex. 2,
Dep. Brian P. Henderson (“Henderson Dep.”)
23:8-18, ECF No. 54-4. Henderson, however, was equivocal
about his understanding of the post, stating: “I think
[Sakac] takes liberties, and I am not sure what is happening
in this, this section right here . . . . It is worded really
weird.” Pl.'s Facts, Ex. M., Sept. 27, 2016 Dep.
Brian P. Henderson (“Nexsan Henderson Dep.”)
152:8-12, ECF No. 50-13. Henderson also acknowledged that EMC
used code names for the Unity products, and that code names
are rarely used as the actual brand name. Pl.'s Facts
¶¶ 27, 30. This is done to “obfuscate the
name” of the final product. Pl.'s Facts ¶ 29;
Nexsan Henderson Dep. 28:4-22.
conducted beta testing on what would become its UNITY
products. Answer 11 ¶ 16; Def.'s Mem. 5-6.
Participation in the beta test program was limited to twenty
organizations, each handpicked by EMC. Pl.'s Facts
¶¶ 39, 41; Pl.'s Facts, Ex. L
(“Thunderbird Beta Opportunity E-mail”), at
EMC-087537, ECF No. 50-12 (“Like any other EMC Beta
test program, the number of slots for customer participation
is limited. Participants will need to meet the [listed]
requirements.”). In December 2015, EMC shipped beta
versions of the products to the twenty select organizations
“for trial use and training.” Def.'s Facts
¶¶ 14, 20; Def.'s Facts, Ex. 1, Decl. Brian
Henderson (“Henderson Decl.”) ¶¶ 4, 7,
ECF No. 54-1. This testing continued into early 2016.
Def.'s Facts ¶ 17.
Beta Test Name
title for the product under testing was inconsistent. At
various times, EMC called the tested product (or components
thereof) “Thunderbird, ” “Oberon, ”
and “UNITY.” Pl.'s Facts ¶ 42;
Thunderbird Beta Opportunity E-mail, at EMC-087536-37
(“In Q1 of 2016, the Corporate Systems Engineering team
will be running the Thunderbird Beta program. As you may
already know, the Thunderbird release is a brand new Unity
platform that is expected to GA in Q2 of 2016.”).
frequently referred to the beta program as Thunderbird. For
instance, in an e-mail from Jason Fonseca dated February 4,
2016, the subject line is “Unity Licenses.” Decl.
R. David Hosp Supp. EMC's Opp'n Nexsan's Mot.
Summ. J., Ex. 9 (“Fonseca Email”), at EMC-083816,
ECF No. 62-9. The opening sentence of the e-mail, however,
says “[EMC] will be continuing customer testing next
week as part of the Thunderbird Beta.” Id.
Similarly, in another EMC e-mail chain titled “CSE
Feedback on Thunderbird Needed, ” EMC staff are asked
to “provide feedback . . . on the Thunderbird
product.” Def.'s Facts, Ex. 25 (“Gento
E-mail”), at EMC-035979, ECF No. 54-27. Additionally,
the beta project final report is titled “EMC
Thunderbird: Beta, Final Report.” Suppl. Decl. Steven
A. Abreu Supp. Nexsan Technologies' Case Chief Issue
Priority, Ex. D, EMC Thunderbird: Beta, Final Report
(“Thunderbird Final Report”) 1, ECF No. 78-12.
beta test products displayed the UNITY mark, such as on the
opening screen and the hardware bezel, Def.'s Facts
¶ 16, but there is no evidence that this occurred before
Nexsan's registration of the UNITY mark. Henderson
testified that during beta testing, the UNITY mark did not
appear on the hardware, but was added to the hardware
“probably close to external launch” of the UNITY
product. Nexsan Henderson Dep. 109:9-110:2. Similarly, the
UNITY opening screen is dated May 2016, Def.'s Facts, Ex.
7 (“EMC Unity Screen”), at EMC-037675, ECF No.
54-9, a date falling after Nexsan's March 22, 2016
registration of the mark, Pl.'s Facts ¶ 18;
Def.'s Facts ¶ 33.
Beta Test ...