Pre-Sale Use of Data Storage Trademark Not Enough to Secure Priority Rights

by Proskauer - New England IP Blog

In 2016, Nexsan and EMC each independently launched computer data storage systems branded with the UNITY mark. Nexsan subsequently brought an action against EMC in Massachusetts, seeking declaratory judgment of priority of the UNITY name and non-infringement of its marks, among other remedies. Nexsan based its action on two previously filed intent-to-use trademark applications, which it claimed conferred a priority date in March 2016. Since EMC filed its trademark applications in April of that year, the burden fell on EMC to establish use in commerce before the March 2016 date.

To satisfy the “use in commerce” requirement of the Lanham Act, a party must demonstrate that the mark was affixed to goods, and those marked goods “[were] sold or transported in commerce.” 15 U.S.C. 1127(1)(B). A party can claim priority when the prior use is an “analogous use,” i.e., when there is “evidence showing, first, adoption, and, second, use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark.” New England Duplicating Co. v. Mendes, 190 F.2d 415, 418 (1st Cir. 1951). The party must demonstrate that its use “was sufficiently clear, widespread, and repetitive to create the required association in the minds of potential purchasers between the mark as the indicator of a particular source and the service to become available later.” T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1376 (Fed. Cir. 1996).

EMC claimed to fulfill the required burden by publicly using the UNITY mark as early as 2014 in connection with its VNX product line. Specifically, EMC asserted that beta testing and pre-market presentations established priority. However, the court held that neither was sufficient to confer priority.

With respect to the beta tests, Judge Young found the evidence insufficient for three reasons. First, the group of participants was too small to form a substantial segment of EMC’s customer base (it included 20 participating organizations, where the product market was tens of thousands of customers). Second, the beta test was confidential (undermining the requirement of open and notorious publicity). Third, EMC did not consistently use the UNITY name, often identifying the goods with numerous monikers (undermining the public’s ability to associate any one mark with the goods).

With respect to the pre-sale presentations, the Court held that they were not sufficiently extensive (they reached 84-1,000 out of more than 10,000 potential customers), and that EMC’s requiring that presentation attendees sign non-disclosure agreements undermined the argument that they were sufficiently public to qualify for use in commerce. The Court also held that references to the UNITY mark on a private blog of one of EMC’s employees was not attributable to EMC, as the blog was clearly personal to the employee and not authorized by EMC.

Judge Young’s ruling in this case highlights the power of ITU trademark applications to establish a presumption of priority in trademark disputes–which can be difficult to rebut. As soon as the owner of an U.S. ITU application uses a mark in commerce, the owner is retroactively entitled to the ITU filing date in a priority dispute. This U.S. rule is a rare exception to the international norm, which is to confer trademark rights based on filing date rather than first use date.

The case is Nexsan Technologies Inc. v. EMC Corp., 16-cv-10847-WGY, before Hon. William G. Young. A copy of the Court’s Order can be found here.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Proskauer - New England IP Blog | Attorney Advertising

Written by:

Proskauer - New England IP Blog

Proskauer - New England IP Blog on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.