Was Zoto's Logo Stolen?
This is a story of possible trademark infringement by the Zoho Corporation on the Zoto trademark. The evidence and claims I make here are the truth as I can best recall and assemble from trademark registration, archived email, and invoices/receipts from vendors.
Can I put 13K photos on the Internets? - April, 2003
In mid-2003 my friend Rick Dunning called me and expressed interest in putting around thirteen thousand personal photos on the Internet. Rick's family was pretty large even then; he and his wife have 6 children today who live in Oklahoma, New York and Europe. His desire to organize and share photos with his family drove him to seek out a way to enabling sharing his collection with everyone he cared about. Being one of his geekier friends, I figured I'd help him out.
Back then there were only a handful of sites who hosted photos and none of them made it easy to manage that many photos. I called Trey Stout, a good friend of mine, about coding up a prototype for Rick. Trey's company shared office space with my two other companies, Grub and The Internet Shop. I told Trey about Rick's project and after meeting Rick he began working on the first version of a photo sharing solution. In mid-2003 I moved back from SF after my short stint of transferring Grub's technology to LookSmart.
The Zoto Brand is Born - December, 2003
A few months after I moved back, Trey and began working together to take the software he wrote for Rick and create a new photo sharing offering. We eventually named the company after writing a program that combined a bunch of random letters with the term 'foto'. One of the variations we came up with was Zofoto.
Because Ofoto already had a trademark on a subset of that name, we knew we couldn't use it. My wife made a suggestion one night that we drop the extra 'fo' in the name. Rick, Trey and I incorporated Zoto shortly afterwards, when we determined we could use the name in commerce in the US without infringing on another company's mark.
Filing for the Zoto Trademark - December, 2003
December 4, 2003 Zoto filed for trademark of the ZOTO mark. The filing was done Mary Lee, a trademark and patent attorney located in Oklahoma City. The trademark filing was done for the name only.
Logo Design - Summer, 2004
After getting an early alpha version of Zoto up in early 2004, I called on my good friend Nathan Manlove at Ammo Advertising to design a logo for Zoto. I wanted a logo that communicated our focus on photo sharing, so I suggested we use taped corners in the logo. Nathan's excellent design skills prevailed and the Zoto logo below was born in Spring of 2004.
We used this logo on the website for a while, and continued using a single letter in the favicon.ico till today. An archive of this icon is available on The Internet Archive for evidence of that fact. I did the original icon using Nathan's design in middle of 2004.
In early Summer of 2004, Nathan ordered our business cards with logo. Trey, Dakota Sullivan (our CMO) and I used at a variety of different trade shows over the following years. Here's an email I got from Nathan once Dakota joined us in the July of 2004 with proofs of our business cards using the same logo he did in the Spring:
We continue using these business cards and similar letterhead with the original Zoto logo on it today. I've had a Zoto card in my wallet since I came out to the Bay in 2007:
Zoto Logo Variants - August, 2004
Nathan continued working on our website design over the coming months. At the same time, Dakota thought it would be helpful to pass out beta test flyers at conferences in the Bay Area. Nathan came up with a spinoff of his updated website design for the back of the flyer which focused on the people in photos:
The flyers were first ordered from Kinkos/FedEx on Shattuck Ave in Berkeley, CA on July 20th, 2004. Dakota, who still lives in Berkeley, picked the flyers up and proceeded to distribute them to several conferences he attended during the remainder of 2004.
The flyer design is critical in that it illustrates how our logo evolved into the more 3D ones we used in the user photos that spelled out Zoto on the website. We continued using both variants of the logo for the business and you can see evidence of our use of that logo on our site in August of 2004 on the Internet Archive.
Press, Press at Last - December, 2004
Doing PR for a startup, especially one based in Oklahoma, can be challenging. Ideally you want to get press attention to spread your name, mark and brand. In Fall of 2004 I got a break when Om Malik called me and asked if he could interview me for a piece he was doing for Business 2.0 titled *Escape from Silicon Valley".
Dakota and I visited Om in San Francisco, and the piece ended up running in the December 2004 issue of Business 2.0. Zoto was mentioned as the startup I was doing on a budget in Oklahoma. A photo of me standing in a dirt road leading up to an oil derrick made the center spread. The guys over at I2E, a technology incubator in Oklahoma City, framed it for me and gave it to me as a gift:
I was stopped frequently, especially in the Bay Area when I would visit, when people recognized me from the article. It goes without saying that getting a piece like this to run in a global publication is huge! It helped boost global signups on Zoto by at least 10x. I remember thinking at the time that we were finally becoming a widely recognized brand, and had a better chance at success because of it.
Second Registration of Zoho Domain - January, 2005
The original Zoho Corporation, an online hospitality marketplace, registered Zoho.com sometime in 2000. They apparently folded like many other dotcom maniacs after their "no software install B2B offering" shut its doors in late 2001. Here's what the first Zoho Corporation's logo looked like at the time:
From 2001 to 2004 there is no data on the Internet Archive regarding the domain. In 2004 a domain squatter seems to have purchased it and owned it through late 2004 to early 2005.
The Internet Archive shows March 2005 as the first indication of a transfer of the domain to AdventNet, almost 4 years from when the original Zoho Corporation released it. All of this activity happened unbeknownst to us. I assume they bought the domain in January from the squatter based on the fact they filed a 'First Use' date in January of 2005 on their trademark.
Note: You can see from the Internet Archive version of Zoho's website in 2005 the logo they use today is the same as it was then.
Zoto Trademark Mistakes - August 30, 2005
In the U.S. you can file for a trademark to indicate you plan to use it to do business, but you have to follow up with another filing once you start doing business which is governed by U.S. law. This is defined as 'First Use in Commerce'. For US corporations, a Trademark's 'First Use' date is usually set to the same date as it's 'First Use in Commerce' date.
I chatted to Mary about the rules surrounding 'First Use in Commerce' and we jointly determined Zoto's FUiC date had to be the day we first took credit cards across state lines in the United States (Summer 2004), not the date we first had the website up for use (Spring 2004). Mary explained to me at the time that running a website was usually not enough to justify a 'First Use in Commerce' date, but other things like taking credit cards, or displaying ads on your site from Google, are. The date we first took a credit card on the site was on or around May 28, 2004, the day we first activated, and sold, an account using our new Paypal shopping cart.
This appears to be a well known hazy area with trademark law, and opinions differ on what constitues commerce. Thinking about it now, I'm fairly certain that because the COPPA Act applies to the online collection of personal information by persons or entities under U.S. jurisdiction from children under 13 years of age, that Zoto was actually operating under federal law. Technically speaking, we could claim we were doing commerce in early 2004, when we were still in early alpha.
As if the confusion around when we were actually doing 'commerce' wasn't enough, here's where it gets REALLY confusing. There was a misunderstanding between Mary and I about our first use date when she asked me about it in mid-2005. Here's the email exchange that led to that misunderstanding, in which I was indicating we had launched a version of the site that took credit cards:
After she got this email, Mary filed a First Use in Commerce date for Zoto of May 28, 2005. It should have been May 28, 2004, as stated above, and poorly indicated by me in the email to Mary. In a subsequent phone call with Mary she explained we could modify the FUiC date with the USPTO to be the correct one, in 2004, but I've yet to do that. All it takes is a sworn statement by me that there was a mistake in the filing.
To recap these event, Zoto's filing date was in December of 2003 with the Trademark Office. After the subsequent filing by Mary in June of 2005, our First Use in Commerce date was accidentally set to May 28, 2005, when it should have actually been May 28, 2004. You can do your own search on the USPTO site to verify the filing and first use dates.
Zoho Files for a Trademark - August, 2006
In August of 2006, nearly three and a half years after we filed for the Zoto trademark, and over a year after they registered the zoho.com domain, Zoho filed their trademark in the same designated category as Zoto's: IC 042. US 100 101. G & S.
I'll note here that Zoho's First Use date, January 26, 2005, is different than their FUiC date. This is actually common for companies who do things overseas (remember Zoho's team is mostly based in India) and must be accompanied by supporting documentation and affidavits. I speculate Zoho set this date because it was at or near the time they first bought the domain name zoho.com. The Internet Archive shows nothing interesting for them in the months after they claim this First Use date.
Startup Stopup - May, 2007
In mid-2007, and after putting in about $1.5M of capital into the company, Rick and I decided we would cease development on the Zoto photo platform. We decided to keep running the site, which I still tend today. Even though we were widely known by then, competitors such as Flickr made gaining consumer mindshare difficult and the competitive landscape generated at least 2-3 photo or document sharing sites a month. Being in Oklahoma didn't help either, so after a good run at a startup life in Oklahoma, I decided to move to the Bay Area in late 2007.
I fell back among friends, and ended up working at Splunk with my colleagues Igor and Ledio, both of which were the primary developers for Grub. I continued running and maintaining Zoto's systems. In 2011 I moved the Zoto root domain to Google's AppEngine infrastructure and started working on a new backend for storing and sharing documents. That work is still in progress and today I continue to provide a basic archival storage service for some of our older customers, using custom hostnames on the hardware running in my garage.
Zoho Files a Trademark for Their Logo - July, 2007
Sometime in 2007 Zoho decided to have their trademark council file their logo for a registered trademark. No, that's not Zoto's logo in their listing, but it sure does look like it:
They listed the First Use in Commerce date as the same day they used the named trademark mentioned above, August 15, 2005. That would appear to be the date they first launched their beta of Zoho CRM.
Zoto Incontestable Status - Late 2010
Mary continued representing Zoto's trademark work all the way up to when I filed for our Incontestable Status a year and a half ago. Zoto currently holds a SECT 15. SECT 8 on the name trademark and our trademark serial number is #78336254. The Section 15 Declaration of Incontestability allows you to request the highest status of trademark protection under federal law. Once your Section 15 Declaration is approved the USPTO, you are protected against many legal challenges that people or businesses might raise to contest your right to your trademark.
With incontestable status, you are protected from having your trademark lost by a legitimate claim of infringement on someone else's mark - as long as they took no action against you during the non-incontestable period. The only way to invalidate an incontestable trademark is to have it invalidated. Hold onto the thought of invalidation. More on that in a minute.
Zoho Plasters BART - Late 2010, Early 2011
Today I live in Moraga, CA, and usually do daily commutes to San Francisco. Sometime in 2010 someone mentioned to me that Zoho was running a lot of ads that looked an awful lot like Zoto's logo, and so I started looking for them.
It was shortly after that I saw the BART ads. I was shocked by the similarity in the two logos. To drive this point home, here's an image of the two logos together:
Remember our favicon? Here's their current favicon in action:
I think it's clear that there's something fishy going on with the Zoho logo in regards to it looking like the Zoto logo. While the names are certainly confusingly similar, the logo itself is what kills me. The shapes, the colors, the angles, and of course the letters are all similar. There's just too much coincidence here to ignore. Just about everyone I've shown this to gets a bit shocked when I show them and tell them the timeline. They all ask what I can do about it, and I tell them what the law says about it.
A Little on Trademark Law - Today
Remember, Trademark law exists for one purpose: to protect a company's trademark from being used/stolen/borrowed/copied, etc. The law can afford protection for a large company from smaller competitors, or small companies from larger competitors. Here's a few excerpts from U.S. Trademark Law that talk about infringement:
Title VI - Remedies
§ 32 (15 U.S.C. § 1114). Remedies; infringement; innocent infringers
(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy or colorably imitate a registered mark and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.
Defending Your Trademark
U.S. Trademark Law states you must defend your mark against infringement if you wish to keep your mark active. There are a few ways you can pursue this: 1) send them a cease and desist letter, 2) file an infringement case in court, or 3) file a petition to have the infringing party's mark invalidated. The law explains a bit about how you can be susceptible to invalidation:
That the applicant believes it is the owner of the mark; that the mark is in use in commerce; that to the best of the declarant’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services; and that the facts set forth in the application are true.
In accordance with Article 52, Paragraph 1, and Article 37, Paragraph 1, Subparagraph 12, of the Trademark Act, an interested party may request the competent authority in charge of trademark matters to conduct a review and invalidate a trademark registration, if a design is identical with or similar to another person's registered trademark.
Basically it's bad news for a company who files a mark that they know or suspect may look like another company's mark.
What's the best way to pursue this?
Zoto and Zoho have a different letter in them, but that doesn't mean they don't sound or look the same. Try sounding out the names in alternating order. "Zoho, Zoto, Zoho, Zoto". Sound the same don't they? Try looking at the names written out. An H/h and a T/t have similar shapes. The words are confusingly similar. The sounds are similar. The offerings are similar. And then there's the issue of the logos, which contain similar letters, shapes, angles, colors and treatment:
The primary problem I have with pursing this is that litigating trademark infringement is expensive business. Here's a quote from a site I found answering the question, "Should I sue for trademark infringement?":
Trademark infringement lawsuits often cost between $250,000 and $750,000 to prosecute all the way through trial. Trials sometimes take years to occur after substantial discovery and a lot of procedural handling. Some trademark cases are even more expensive to pursue if they are vigorously contested. You should plan on a budget that will allow you to get to the trademark infringement case to the finish line. The finish line is a jury trial. - Traverse Legal's Blog
Getting Zoho Council Involved
At this point I've emailed the fine folks over in their legal department a cease and desist letter and have gotten in touch with their trademark council and talked to them on the phone. Out of respect, and a show of good faith, I don't want to go too far into what we discussed, but the council for Zoho did indicate I made this whole story up about the logos looking the same. With the evidence I have built I suppose that is a reasonable tact to take with me. If they could illustrate I made this stuff up, they could sue for libel.
To the best of my ability, I believe that I am telling the truth. That belief is built from overwhelming evidence in the form of emails, statements from people who worked for Zoto or did business with us, and receipts from Kinkos and other printers who did work for us.
One great thing about living in the U.S. is that you can say what you believe to be the truth, no matter the consequences to another party! I am telling the truth about this matter.
I need help.
First, I value your opinions. I encourage you to give me feedback below in the comments. Second, there are trademark attorneys who work matters like this on contingency. If you are interested in learning more about this case, feel free to contact me. I've talked to three firms who specialize in this type of trademark litigation, and all of them believe a course for invalidation of trademark is the most logical because it's easy to illustrate to the court with the logos looking so similar. Given we'd need to modify our FUiC date to pursue an infringement case, I tend to agree with them.
This post was original put up in early February of 2012. I removed it for a time while I was doing further research for accuracy's sake. I have since updated it to make the timelines a bit cleaner and better establish evidence we were in possession of our Logo well in the middle of 2004. I've also attempted to paint a timeline that contributes to the argument that somehow, somewhere, it might have been possible someone read my article in Business 2.0, seen our flyers circulating in the Bay Area, or received a business card from someone somewhere that had our logo on it.
At this point, I'm simply putting this material up for the world to see and comment on. My thought is that only a bit of stubborn resolution is going to help resolve issues this at this point, but I have faith I'm fighting a good cause here. As trademark law clearly states, if you don't protect your trademark, you lose it!
I worked hard on building that mark, and don't plan on losing it.
