Last month Zoom announced at its annual Zoomtopia conference that it would introduce Zapps. These are apps on Zoom set to enable third-party developers to create as well as distribute apps that enhance the Zoom meeting experience/workflow with the express goal of increasing productivity before, during, and after meetings. Set to make their way to the Zoom platform by the end of 2020, Zapps were to become open to developers shortly thereafter. At the time of the announcement, Zoom said it had over 35 launch partners, including Asana, Atlassian, Box, Dropbox, Hubspot, Kahoot, Kaltura, Salesforce, ServiceNow, Slack, SurveyMonkey, and Zendesk.
That could all change, however, which is something I think most could have predicted given the name of the offering Zapps, which bears a striking resemblance to Zapier branding. On Monday in the Northern District of California, Zapier Inc. filed a formal grievance against video conferencing giant Zoom Video Communications Inc., citing trademark infractions and unfair competition. In the complaint, Zapier alleged that Zoom used the name Zapp for its third-party app integration within Zoom, a move it argues violates Zapier’s ‘Zap’ third-party app integration business.
Zapier further claimed that Zoom is “completely aware of Zapier’s use of Zap and Zaps and the overlap it shares with Zoom’s Zapps,” noting that its workflows are referred to as Zap or Zaps. Aryeh Reif, Founding Partner, Reif & Reif, a Tel-Aviv-based law firm told me: “It appears that Zapier had not previously registered a trademark in the USA for Zap, although the company has now applied (S/N 90272661) to register Zap as a federal US trademark stating they first used the mark in commerce in the US as early as 2011.”
Reif added, it remains to be seen if the mark will get registered. It is also a tossup regarding whether the proof of use Zapier submitted will be accepted by USPTO. “In the absence of a registered trademark, Zapier is relying on other causes of action, such as common law trademark infringement, unfair competition, etc.”
“If Zapier had owned a registered trademark for ZAP (which they apparently do not), then arguably they may have felt very confident in their claims, inter alia in light of the similarity between the marks, the goods, and the expected customers”
He added, when a trademark is not registered, then the totality of the circumstances takes a more leading role. For example, the circumstances of how, where, when, and to what extent Zapier has actually used the word Zap as a trademark will be important, as well proving the goodwill and reputation of the word among relevant consumers. He did note that it is not easy to succeed in such claims when there is no registered trademark, but it is not impossible and that a large percentage of such cases settle out of court.
Back in September, Zoom’s stock rose by 25 percent, and its revenue increased by 355 percent. Throughout the entirety of the pandemic, we’ve essentially seen the rise of a megabrand with the amount of popularity Zoom’s gained, making its Founder and CEO, Eric S. Yuan, one of the world’s richest people. Most recently, Zoom introduced its much-anticipated end-to-end encryption for all free and paid users after facing backlash once the company announced it would be made available for paid Zoom account users only, shortly thereafter reversing course on is initial decision which excluded free plans from end-to-end encryption.
