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Zenbilling Letter (F 6.19.13)

Zenbilling Letter (F 6.19.13)

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Published by Calvin Correli
Zenbilling Letter (F 6.19.13)
Zenbilling Letter (F 6.19.13)

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Published by: Calvin Correli on Jun 21, 2013
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06/06/2014

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(617) 714-5386 Miguel@danielsonlegal.

com

Miguel C. Danielson miguel@danielsonlegal.com (617) 714-5386 www.danielsonlegal.com

One Mifflin Place Suite 400 119 Mt. Auburn St Cambridge, MA 02138

WITHOUT PREJUDICE ALL RIGHTS RESERVED NOT ADMISSIBLE UNDER FRE 408 June 19, 2013

Via FedEx and e-mail (karen@mod4llp.com) Karen Stambaugh MOD4 LLP 2233 Santa Clara Ave Suite 8A Alameda, CA 94501 Re: ZENBILLING

Dear Ms. Stambaugh: I am counsel to Zendesk, Inc. (“Zendesk”) in connection with trademark and other intellectual property matters. I write to you in your capacity as trademark counsel to Zenbilling, LLC (“Zenbilling”). As you may be aware, my client previously filed a Request for Extension of Time to Oppose Zenbilling’s U.S. Trademark Application No. 85736477 for the mark ZENBILLING. As of today’s date, my client has filed a Notice of Opposition against the aforementioned Application before the Trademark Trial and Appeal Board of the US Patent and Trademark Office, a courtesy copy of which is enclosed herewith. I am writing to you to convey Zendesk’s position with regard to the enforcement of its trademark rights. Zendesk is always reluctant to take legal action, particularly with respect to companies that are valued customers of its services. However, in this case and for the reasons set out below, Zendesk is firmly convinced that they have no other choice. At the outset, my client understands that there are numerous marks in use in the technology industry that contain the word “ZEN” in some form or another. My client is under no illusion that they possess the exclusive right to use the term ZEN in connection with any mark within the field of technology generally, or software more specifically. However, Zendesk has determined that some ZEN-formative trademarks, in certain circumstances, are either intentionally or unintentionally likely to confuse consumers as to the affiliation of the owners of such marks and Zendesk. Without belaboring the issues, and understanding that the TTAB proceeding that my client has today commenced will afford the opportunity for a full and complete exposition of such issues, my client believes that Zenbilling’s use of the ZENBILLING mark is likely to cause confusion for, among others, the following reasons:

Ms. Karen Stambaugh Page 2 of 2

Both the ZENDESK and ZENBILLING marks are very similar because they begin with the highly distinctive and dominant word ZEN, combined with a secondary word that is subservient to the ZEN portion. Both the ZENDESK and ZENBILLING marks have similar overall commercial impressions – they are both combinations of the eastern-philosophy word ZEN followed by a reference to a difficult or burdensome business process, concatenated in juxtaposition and contrast. Both the ZENDESK and ZENBILLING services consist of SaaS-delivered business process functions that are traditionally difficult or complicated in nature but are simplified through the respective SaaS applications. Both the ZENDESK and ZENBILLING services are very easy to purchase and use. Both companies offer free trials, making the purchase decision one in which very little care must be undertaken. Both companies offer simple, monthly, credit-card based payment fee structures based on the number of users or customers. Customers and potential customers of both the ZENDESK and ZENBILLING services are highly similar if not identical. The distribution and marketing channels for both the ZENDESK and ZENBILLING services are highly similar if not identical. Both products are sold directly to the consuming users and delivered as SaaS offerings.

• •

As I believe your client will acknowledge, Zendesk is a very well respected and successful startup company with substantial brand awareness. Zendesk has duly registered its trademark for ZENDESK in both the United States (U.S. Reg. No. 3818497) and elsewhere in the world. For this reason, many of the consumers that fall squarely in the target market of both Zendesk’s and Zenbilling’s offerings are aware of Zendesk’s trademark rights and their prevalence in the marketplace. Accordingly, my client believes that such consumers will be likely to assume that Zenbilling’s services are a new or related offering of Zendesk. For all of the foregoing reasons, and in order to protect its valuable rights, Zendesk must request that use of the ZENBILLING trademark by your client cease immediately and that U.S. trademark application no. 85736477 be withdrawn. Accordingly, such action is hereby demanded. I would be grateful for your client’s response to this request no later than July 1, 2013. Very truly yours,

Miguel C. Danielson cc: John Geschke, Esq., Zendesk, Inc. Efraim Harari, Esq., Zendesk, Inc.

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