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Zendesk and the Art of Trademark Trolling

DEEPLINKS BLOG
May 20, 2016

Zendesk and the Art of Trademark Trolling

Zen. The word has come to be associated with simplicity, intuition, and a sense of enlightenment. It originates from a branch of Buddhism that emphasizes meditation and self-reflection as the way to achieve enlightenment.

Naturally, given the cultural cachet of the word, it’s been adopted to various degrees by businesses and other organizations. One of these is Zendesk, maker of customer helpdesk software that businesses use to answer and resolve customer questions and complaints.

Zendesk is quickly becoming famous for another activity: bullying small companies into changing their name if it contains the word “zen.”

We recently became aware of Zendesk’s tactics via the ordeal of a WordPress plugin called Comet Cache, formerly known as ZenCache. To put it very simply, Comet Cache allows websites running on the WordPress platform to create a temporary storage area where users visiting the site can quickly find the information they’re looking for, rather than fetching the data every time from the database, which can be quite expensive when accounting for computing power and other resources.

Suffice to say, Comet Cache has nothing do with customer helpdesk software.

However, that didn’t stop Zendesk from demanding the company to change its name. In a letter sent by Zendesk’s attorneys to Comet Cache, one of the reasons Zendesk gave for why “ZenCache” could be confused with “Zendesk” was:

[B]oth the Zendesk and ZenCache products are offered with free trials; in fact, all use of ZenCache “Lite” product version appears to be free… Removing cost from the equation eases the decision to sign up for and use the ZenCache product, reduces the level of thought and deliberation involved, and consequently may increase the chance of confusion.

It’s hard to distinguish whether the above is a Zendesk sales pitch or a baseless legal argument. Offering a product for free, especially one not competing with yours, doesn’t mean it somehow increases the likelihood of confusion warranting trademark protection. And the fact that ZenCache wasn’t even marketed directly at businesses, unlike Zendesk, the likelihood of confusion is nonexistent.

Before the US Patent and Trademark Office, Zendesk has filed close to 49 oppositions to companies’ attempts to trademark their products and services that contain the word “zen.” We haven’t analyzed all of them, but wouldn’t be surprised if Zendesk’s legal arguments in some of those proceedings were a little shaky as well.

In the letters that Zendesk sends to companies, it seemingly realizes that it doesn’t have a monopoly over the word “zen” and its use in technology. The company’s lawyer wrote to Comet Cache (and in identical letters to others in the past):

At the outset, my client understands that there are a variety of marks in use in the technology industry that contain the word “ZEN” in some form or another. Zendesk is under no illusion that they possess the exclusive right to use the terms ZEN as a trademark within the field of technology generally, or software more specifically. However, my client believes that certain ZEN-formative marks, used in conjunction with particular types of good or services, may create a likelihood of consumer confusion that such products are offered by or associated or affiliated with Zendesk.

The first part of the paragraph seems sensible, but the latter half is where Zendesk’s words don’t match its actions. Despite what the letter says, Zendesk appears to be sending their letter to technology companies with names that start with “zen,” even if that company doesn’t compete with Zendesk in any way.

Unlike a koan—a logic-defying riddle told by Buddhist masters to their students designed to bring them on the path of enlightenment—there’s a logical solution to all of this. Perhaps Zendesk would be well advised to self-reflect on whether it’s trademark trolling is actually worth the trouble.

If you’re someone who has received similar letters from Zendesk, we would be interested in hearing from you.

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