EMC, Nexsan Take 'Unity' Brand Battle To Court

EMC and Nexsan are embroiled in a legal dispute as to who has the right to use the "Unity" name in reference to storage solutions.

Hopkinton, Mass.-based EMC on April 29 sent a letter to Chatsworth, Calif.-based Nexsan asking Nexsan to cease using the Unity brand name for its latest storage solution, and to withdraw its application for a trademark on the Unity name.

Nexsan on May 6 responded by filing a lawsuit against EMC asking that the court recognize Nexsan's trademark priority and non-infringement.

[Related: Nexsan Unity: Unified Primary Storage, File Sync And Share Combined For Secure Data Access]

CRN has reviewed a copy of the lawsuit, which was filed in the U.S. District Court for the District of Massachusetts. References to the letter are contained within the lawsuit.

The legal dispute stems from the release of storage solutions with the Unity brand within a couple of weeks of each other.

Nexsan on April 26 unveiled Nexsan Unity, a new storage solution combining its NST unified storage platform with its Transporter enterprise file sync and share technology to allow business data to be used for easy sharing and collaboration from primary storage without the need to send the data over a cloud.

EMC on May 2 used EMC World to unveil EMC Unity, a new 2U unified storage solution that combines file and block storage capabilities. An all-flash storage version of EMC Unity features a list price less than $20,000, while a hybrid flash version starts at less than $8,000.

On April 29, the same day that CRN broke the news that EMC was planning to unveil EMC Unity, EMC emailed a letter to Nexsan in which EMC said it recently learned that Nexsan filed two trademark applications with the U.S. Patent and Trade Office for trademarks including the term Unity, according to the Nexsan lawsuit.

The EMC letter said that EMC first used the Unity mark starting in March of 2015 in customer presentations, a move which gives EMC "senior use" of the Unity mark. However, the letter did not say whether EMC brought solutions to market with the Unity mark.

A search on the U.S. Patent and Trademark Office website shows that Nexsan applied for the word mark Nexsan Unity on March 22. Nexsan applied for the mark in the category of computer hardware and software, but did not list a date for first commercial use in the application.

Nexsan on March 22 also applied for a trademark on the term Unity in the computer hardware and software category.

EMC, according to the USPTO database, applied for the word mark EMC Unity on April 29 for both the computer hardware and software and in the computer services category. EMC in the application said EMC Unity was first used on March 19, 2015, for both categories, and was first used in commerce on that date for computer services and on Dec. 14, 2015, for computer hardware and software.

EMC on April 29 also applied for a trademark for Unity in the computer hardware and computer services categories.

"EMC, therefore, demanded, on threat of litigation, that, on or before May 6, 2016, Nexsan abandon its trademark applications and not use any UNITY mark for goods and services related to EMC's UNITY goods and services," according to Nexsan's lawsuit.

Nexsan's response was its lawsuit, filed May 6, said Nexsan CEO Robert Fernander.

Fernander told CRN that his company, like any company applying with the USPTO for a trademark, did a full search on Unity but did not find anything.

"We filed for the trademark on March 22, and then launched our product," he said. "EMC launched its 'Unity' product subsequent to ours."

While EMC claims prior use to the mark Unity, Nexsan did its due diligence on the term during the application process, Fernander said. "I can't see how EMC can bully us into giving it up," he said. "EMC has not yet responded to our lawsuit. I'm sure they will. It will be a strong response."

Nexsan rests its case on two material facts, Fernander said.

"We applied before EMC did," he said. "And we publicly announced 'Unity' before they did. EMC did not publicly use 'Unity' and didn't apply for the 'Unity' trademark before we went public."

If EMC had not sent its letter to Nexsan, any disputes over the Unity name would have been decided at the patent office, where there is one year or so backlog, Fernander said. "Instead, EMC sent the letter to demand we rescind our application."

EMC declined to comment on the Unity dispute, citing what an EMC spokesperson said is a longstanding policy of not commenting on pending litigation.

EMC Unity is a strong storage solution that has already generated a lot of opportunities for the channel, said Jamie Shepard, senior vice president for health care and strategy at Lumenate, a Dallas-based solution provider and longtime EMC channel partner.

"It's really unfortunate at a time when the EMC solution is coming to market that it is impacted by a technicality," Shepard told CRN.

Bill Allen, consultant and chief technology officer at Westlake Technologies, a Thousand Oaks, Calif.-based solution provider and longtime Nexsan channel partner, told CRN that he does not put a lot of weight on EMC's legal moves against Nexsan.

"I understand Nexsan's position, but I understand that EMC is the 800-pound gorilla," Allen said. "I expect EMC will drag this out as long as possible to aggravate Nexsan. … If EMC were as strong in the market as it was in the past, it wouldn't be suing."

EMC is good at muddying the waters for the competition, Allen said. "But Nexsan has long-term value propositions including with Unity."