Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 1 of 18
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`KAUFHOLD GASKIN GALLAGHER LLP
`JONATHAN B. GASKIN, ESQ. (SBN 203625)
`Email: JGaskin@KaufholdGaskin.com
`QUYNH K. VU, ESQ. (SBN 286631)
`Email: QVu@KaufholdGaskin.com
`388 Market St., Suite 1300
`San Francisco, CA 94111
`Telephone: 415-445-4620
`Facsimile: 415-874-1071
`
`Attorneys for Zapier, Inc.
`
`
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`ZAPIER, INC.,
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`Plaintiff,
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`
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`ZOOM VIDEO COMMUNICATIONS, INC.,
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`Defendant.
`
`vs.
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`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA – SAN FRANCISCO DIVISION
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`
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`
`
`Case No.
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`COMPLAINT:
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`1. 15 U.S.C § 1125
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`2. Common Law Trademark
`Infringement
`3. California Business & Professions
`Code § 17200
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 2 of 18
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`INTRODUCTION
`I.
`Plaintiff Zapier, Inc. (“Zapier”) brings this lawsuit against Defendant Zoom Video
`1.
`Communications, Inc. (“Zoom”) for illegally infringing on Zapier’s trademarks, usurping and
`trading on Zapier’s goodwill and reputation, and unfairly and unlawfully competing with Zapier
`as follows:
`Zapier (which rhymes with “happier”) is an internationally-prominent technology
`2.
`company specializing in online automation tools that connect and integrate third party internet
`applications (“apps”) and application services. Zapier does so through Zapier specific
`workflow(s) that a user of the Zapier software can create in order to connect or trigger certain
`actions among different third-party apps that are integrated through Zapier – which automated
`workflow(s) Zapier and the rest of the world refer to as a “Zap” or “Zaps.” As an example, a
`user can create a Zap integrating multiple apps so that the action of a person filling out a form on
`that user’s website will autonomously trigger sending a welcome email from that user’s email
`account to the person that filled out the form and also send the data that the form gathered onto a
`spreadsheet. While combinations users can use to create Zaps are endless, each Zap is always an
`automated workflow on the Zapier platform.
`Zoom is an internationally prominent technology company specializing in audio
`3.
`and visual communications over the internet.
`As long ago as 2015, Zoom partnered with Zapier so that Zapier would provide
`4.
`Zaps that allowed Zoom’s and Zapier’s users to integrate the Zoom app with other third-party
`apps. In its September 9, 2015 Special Announcement touting its new partnership with Zapier,
`Zoom extolled the virtues of integrating Zoom with other apps through Zapier and closed the
`announcement with “Happy Zooming and Zapping.” (https://blog.zoom.us/zoom-and-zapier/).
`Since that time Zapier and its users have created many hundreds of Zaps to integrate Zoom with
`other apps. Accordingly, as demonstrated above, Zoom is completely aware of Zapier’s use of
`“Zap” and “Zaps” and the overlap with “Zapp.” Zoom’s own website currently contains
`instructions on how to create a Zap and integrate third party apps with Zoom through Zaps.
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 3 of 18
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`(https://support.zoom.us/hc/en-us/articles/205260649-How-To-Use-Zapier) (“With Zapier, you
`build simple automations called Zaps that work in the background and automate your work. For
`example, you can create a Zap that automatically subscribes new Zoom Webinar registrants to a
`MailChimp list. Or create a Zap that registers a contact for a Zoom Webinar whenever a form is
`completed or a PayPal purchase is completed”).
`Following the worldwide Covid-19 pandemic, and the dramatic shift from in-
`5.
`person communications to remote working and distanced interactions, Zoom has risen to much
`greater visibility. Zoom recently completed an initial public offering, grew significantly, and is
`now attempting to expand its business into new areas.
`Specifically, Zoom went public on April 19, 2019 at $36.00 per share and closed
`6.
`that day at approximately $62.00 per share. As of Friday, October 23, 2020 Zoom shares had
`rocketed to a closing price of $511.52 with an astronomical 653.28 price to earnings (P/E) ratio.
`This sky-high P/E ratio requires an extremely high growth rate to justify the current stock price
`and Zoom needs “to continue introducing new products” to grow the company’s business in new
`areas to meet these lofty expectations.
`One of these new business areas is described by Zoom as “Apps in Zoom” –
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`“apps that you can use within the Zoom platform to help improve productivity and create more
`engaging experiences.” These “improved productivity” and “more engaging experiences” are
`achieved, in part, by integrating, via the Zoom platform, Zoom with third party apps, such as
`Slack, Dropbox, Salesforce, and SurveyMonkey. Such connections and integrations between
`third party apps, including Zoom and Slack, Dropbox, Salesforce and SurveyMonkey, are
`Zapier’s core value and business – and have long been referred to by Zapier, Zoom, and millions
`of other companies, users, reporters, and others as “Zaps.”
`As such, it was an immediate problem for Zapier – and for consumers – that
`8.
`Zoom, in announcing that it would be starting the new business area “Apps in Zoom” also
`announced that it would be calling this “Apps in Zoom” integration business: “Zapps.” To be
`clear, these are not Zoom apps – the Zoom app is called “Zoom.” These are not new apps Zoom
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`COMPLAINT
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 4 of 18
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`is creating. These so-called “Zapps” are third party apps Zoom is integrating – including more
`than half that are already integrated with Zoom via Zaps by Zapier. Instead of calling its new
`integration of third-party apps “Apps in Zoom” or the “Zoom App Marketplace” (which would
`be industry standard), Zoom is blatantly ripping off the decade of goodwill and premier
`reputation built by Zapier for its Zaps by using the phonetically identical and alternately spelled
`term “Zapps.”1
`Aside from Zapier (and Zoom itself), millions of people worldwide over the past
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`decade have used the term “Zaps” to describe Zapier’s product and immediately associate it with
`Zapier. Occasionally third parties misspell and use “Zapps” when referring to Zapier’s product.
`Zoom itself has used “Zapping” (with two p’s) as a verb to describe the process of using Zapier’s
`product.
`Zapier was not alone in being astonished that Zoom would blatantly steal Zapier’s
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`trademarked name for its new business and attempt to expropriate Zapier’s goodwill, reputation,
`and industry leading position in the app integration business. Simply put, people are already
`completely familiar with Zapier’s Zaps and confused by Zoom’s “Zapps.” Hundreds of tweets
`and comments spread across the internet questioning how Zoom could use Zapier’s product
`name and expressing confusion at Zoom’s use of “Zapps.” Some comments went so far as to ask
`if Zoom had bought Zapier.
`Following Zoom’s announcement, the CEO of Zapier reached out to the CEO of
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`Zoom to try to resolve this outside the courts. However, Zoom’s CEO never responded. Nor did
`anyone else from Zoom – forcing Zapier to take legal action.
`12. While Zoom starting a new business is, of course, permissible, it is illegal for
`Zoom to misappropriate Zapier’s trademarks and unfairly compete by infringing on Zapier’s well
`established usage of “Zap” and “Zaps” through naming its new business the aurally identical
`
`1 There’s little doubt that Zoom would (rightfully) sprint to court if Google or Microsoft had
`called their audio/visual communication products the aurally identical, but alternately spelled
`“ZoomM” instead of “Meet,” and “Teams,” or if Skype brought out an aurally identical “Szoom”
`product.
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`COMPLAINT
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 5 of 18
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`“Zapp.” Zoom is not creating or selling new apps – it is integrating third party apps. Zoom has
`no goodwill, no history, and no viable reason for using the term “Zapps” – other than to illegally
`extract value from Zapier’s trademarks, reputation, and goodwill. Even if Zoom’s business was
`entirely different and did not involve integrating third party apps, Zoom’s use of the aurally
`identical term “Zapps” in a new and unproven business across a widely used audio/visual
`communications platform would inevitably unfairly dilute and harm Zapier’s well-respected and
`time-proven market-leading business of providing app integration Zaps.
`Zapier seeks to enjoin Zoom from using the term “Zapp” or any other identical
`13.
`sounding infringements on its trademarks and to recover damages caused by Zoom’s unfair
`competition and injury caused by Zoom’s dilution of Zapier’s goodwill and reputation.
`THE PARTIES
`II.
`Plaintiff Zapier, Inc. is a Delaware corporation having its registered address in
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`San Francisco, California.
`Defendant Zoom Video Communications, Inc. is a Delaware corporation having
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`its principal place of business in San Jose, California.
`JURISDICTION, VENUE, AND INTRADISTRICT ASSIGNMENT
`III.
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`This Court has subject matter jurisdiction under 15 U.S.C. § 1121(a), 28 U.S.C.
`§§ 1331, 1338(a), and has jurisdiction over all related state law claims under 28 U.S.C. §
`1338(b), supplemental jurisdiction under 28 U.S.C. § 1367(a) and the doctrine of pendent
`jurisdiction.
`Venue is proper in this district under 28 U.S.C. § 1391(b) because both Zapier
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`and Zoom are residents of the district and a substantial part of the events giving rise to the action
`occurred in this district.
`This action is assigned to the San Francisco Division because the substantial part
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`of the events which give rise to the claim occurred in San Francisco County.
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`COMPLAINT
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 6 of 18
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`A.
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`FACTS
`IV.
`Plaintiff Zapier’s Trade Name, Service Mark, and Trademark
`Zapier, first incorporated under the name Snapier LLC in 2011, launched its
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`application integration product to the public in May 2012. Zapier is a technology company that
`creates automated workflows, allowing information between users’ web apps to move and flow
`automatically. Its core value and business is connecting and integrating third-party apps for its
`users via software links through its platform known as “Zaps.”
`Zapier is a well-known technology company with international reach. Zapier has
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`over seven million registered users across all 50 U.S. states and 199 countries and territories.
`Users can use Zapier to connect the applications they use every day and can
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`configure an automated information flow, called a “Zap,” between their various apps and
`services. For example, Zapier’s service allows users to create a Zap so that the action of a
`customer registering for a meeting on Zoom will trigger sending of a welcome email to the
`customer as well as sending the customer data to a payment application and billing the customer
`for his/her registration fee. This Zap integrates the user’s Zoom, email, and billing applications.
`Zapier has continuously used the term “Zap” (and the plural “Zaps”) since 2011
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`to describe the Zapier specific workflow that a user creates to connect or trigger certain actions
`among different third-party apps.
`Zapier offers integrations for over 2,900 applications, including Twitter, Google
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`Sheets, Gmail, Facebook, Salesforce, Shopify, Dropbox, Instagram, LinkedIn and Zoom.
`Subscribers of Zapier’s service can create nearly endless combinations of Zaps using Zapier’s
`platform and technology.
`Zapier uses the term “Zap” throughout its website and marketing materials,
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`including on its landing page, its sign-up process, and subscriber emails. When a user signs up
`for a Zapier account, she is first prompted to create a Zap. Attached as Exhibit 1 are examples of
`Zapier’s webpage and subscriber emails.
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`COMPLAINT
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 7 of 18
`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 7 of 18
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`Not sure where to
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`start,
`
`That's okay! Ifyou want to learn more about what Zapier can do for
`you, try one of these Zap templates. These are pre-made Zaps where
`we‘ve done most of the heavy lifting and will let you see an example
`of how a Zap works.
`
`Get a daily SMS message
`with the day's weather.
`
`Irv,-
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`Schedule weekly Slack
`messages to send
`reminders to your team.
`
`Try this Zap
`
`Try this Zap
`
`Tomorrow, we'll show you how to connect the apps you use
`most—and teach you how to create a customized Zap that does your
`busywork for you.
`
`Zaps connect the apps you use every day
`
`TRIGGER
`thi I ;
`
`act a new mum in Email
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`Start workflows from any app
`PttkaHugerthatnetsynur2.1: inlt mutton.
`
`ACTION
`50th [Ilt‘dlldthlllt’lll1i<lllleailll)Dr0PbOX
`
`ACTION
`Alert me n Slack Jbout the new Dropbox file
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`Finish routine tasks automatically
`Zap: complete atiions. wh lc you sclvc more unmrtant prnblmws
`
`Simple, fill-in-dIe-blank setup
`Don t, (It :I. automate (30 tom idea to wmlfow I‘I mi mtg;
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`.bUJN
`\OOONQUI
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`oz:
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`COR/[PLANT
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 8 of 18
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`Zapier is an extremely popular and successful company and its integrations are
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`ubiquitous throughout the technology world – as is the association of its automated workflow
`integrations with Zapier’s distinctive term for those integrations: “Zap.”
`Indeed, in 2015, Zoom and Zapier announced that they were integration partners,
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`using Zapier’s Zaps to increase Zoom’s user functionality through software integrations such as
`the Zap that automatically adds Zoom webinar registrants to the Salesforce application as leads
`or the Zap that automatically adds new Eventbrite attendees or Gmail email subscribers to Zoom
`as webinar registrants.
`Zoom’s own website describes its integration with Zapier and repeatedly uses
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`Zapier’s proprietary term “Zap” to refer to Zapier’s product, including:
`a. “you build simple automations called Zaps”
`b. “you can create a Zap that automatically subscribes new Zoom Webinar
`registrants to a MailChimp list”
`c. “Popular Zaps Using Zoom”
`d. “Every Zap has a trigger app”
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`COMPLAINT
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 9 of 18
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`e. “Follow the steps to finish creating your Zap and test your Zap”
`Attached as Exhibit 2 is a true and correct copy of Zoom’s “How to Use Zapier” webpage. Part
`of it is reproduced below:
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 10 of 18
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`The term and service mark “Zap” has been featured in over 200 publications,
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`blogs, and/or websites to refer to Zapier’s automation service. As a small sampling, Zapier and
`its service mark “Zap” has been recognized and written about in Forbes, Business Insider, Yahoo
`Finance, PCMag, Fast Company, Hacker Noon, LifeWire, and ComputerWorld. Zapier’s zap
`has been discussed by the press as well as users in community forums:
`a. “One paid Zoom account bonus is that you can post Zoom meeting links to Slack
`automatically. . . Having a Pro account means you have access to the Zoom API so
`you can use tools like Zapier Zap automation to get notifications for Zoom straight to
`your Slack channel.” (Lifewire, March 30, 2020)
`b. Listed as a top productivity tool for entrepreneurs by Forbes: “If you intend to save a
`file in Google Drive you can create a zap and upload it on Zapier.” (Forbes, January
`23, 2020)
`c. Reddit user asking: “What Zapier Zap integration do you wish existed, but does not
`yet?” (Reddit, Jan 8, 2018)
`Thousands of third parties have discussed and millions of users have used
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`Zapier’s “Zaps” at length in the decade since Zapier started.
`Zapier’s well-known, highly respected international reputation and substantial
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`goodwill in the “Zap” mark are of great value to Zapier. Zapier will continue to use the “Zap”
`mark in connection with its service and automation of app integrations. Zapier has spent
`significant funds protecting its “Zap” mark, including purchasing the domains “Zap.com” and
`“Zappier.com”2 to go along with “Zapier.com.3”
`
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`2 “Zapp.com” is owned by a venerable international metalworking business founded in Germany
`by a Mr. Zapp in 1701. “Zapps.com” is owned and used by a test preparation company.
`
` Zapier (which rhymes with “happier”) uses the “Zapier” spelling because it contains the term
`“api” (short for “application programming interface”) which is a core component of Zapier’s
`application integration processes.
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 11 of 18
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`B.
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`Zoom’s Infringing Use of the “Zap” Mark
`After partnering with Zapier in 2015 and utilizing Zapier’s integration Zaps for
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`years, Zoom very recently decided to internally build its own product that would integrate third-
`party apps into the Zoom platform.
`On October 14, 2020, at its developer conference, Zoom announced that it was
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`launching “Zapps” to enable third party developers to create and distribute apps in the Zoom
`marketplace for use and integration on Zoom. Zoom stated that “Zapps bring best of breed
`applications into the Zoom experience for seamless productivity and engaging experiences.”
`Zoom described this as “Zapps (Apps in Zoom).” Zoom also announced that it would launch its
`“Zapp” product by the end of 2020 and that it was actively developing the business now.
`Attached as Exhibit 3 is a true and correct copy of Zoom’s announcement of its “Zapp” product.
`Zapier’s Zaps and Zoom’s “Zapps” operate within the same market space.
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`Zapier’s Zaps connect and integrate third-party applications to help users with their workflow
`and thus enhance productivity. Zoom’s “Zapp” integrates Zoom’s platform with third party
`applications for “seamless productivity” according to Zoom. Thus, Zoom’s “Zapp” is
`phonetically identical to, spelled similarly to, and competes with Zapier’s Zap.
`The term “Zapp” is a close replica or colorable imitation of Zapier’s distinctive
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`“Zap” mark and is confusingly similar and identical phonetically and in appearance to the “Zap”
`mark. The overall commercial impression conveyed by the term “Zapp” is essentially identical
`and confusingly similar to Zapier’s “Zap” mark.
`Consumers instantly highlighted the similarity of Zapp with Zap and the
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`confusing nature of the marks with comments such as:
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 12 of 18
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`Martin H. Nurmark ILE'Il--1Eir1ir'-:Hl-.
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`- Dot 1.
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`F.
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`have I heard that name beta-re?
`oorn us ir‘ntroduces Eepps. Wi _
`'E‘idi'l, the connections you set up in I._n.|2epier'
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`Norma n H a
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`3;. :ja'l‘:h-: 'ze1E-E
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`I have to adr‘n't. |
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`'r‘it'ally' con—"used ESL
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`1:52 Fifii‘
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`perti'iei'sl'iip l'r-r' acquisition]. I smell a tr'ecler'r'ierlr; letter and a quick rebr'encl.
`.'e e ILEIn.-.I a clete-ster
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`a Leon Hitchen
`J lit-r
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`:'
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`Zapps? Like zaps from Zapiei'?
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`Sill} F' i"-.-'1
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`Vlad A. lonescu
`'s:':I_i
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`'
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`At first I thought this is a Zapier integration 5
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`Zapier workflows are called Zaps
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`This is going to confuse people
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`6 Ryan Hoovera
`BIG 3 n nou i’i-Ceinent il-L
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`_ __
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`:1
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`COMPLAINT
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 13 of 18
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`Attached as Exhibit 4 are true and correct copies of some of the tweets and
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`comments by consumers comparing the similarity and confusing nature of “Zapp” with Zap in
`the immediate wake of Zoom’s announcement.
`Zoom improperly benefits from using this similar mark to tie its new and
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`unproven product for application integration, “Zapps,” with Zap – a proven application
`integration product that millions use for third-party application integration, including with Zoom.
`The use of the confusingly similar (and aurally identical) mark by Zoom has
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`caused and will continue to cause consumers to be confused. The unauthorized and infringing
`use by Zoom of the “Zapp” mark will, unless enjoined, cause damage and injury to Zapier’s
`goodwill in its long-established Zap mark.
`Zoom’s use of “Zapp” will also dilute the strong brand of Zap by blurring its
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`ownership and distinctiveness and connecting it to a new and unproven product over which
`Zapier has no control.
`Zapier has been and will continue to be harmed and damaged as a result of the
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`infringement on its mark.
`
`FIRST CLAIM FOR RELIEF
`Federal Unfair Competition and Dilution (15 U.S.C. § 1125)
`Zapier re-alleges and incorporates each and every allegation contained in the
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`paragraphs above with the same force and effect as if said allegations were fully set forth herein.
`Zapier is the senior user of the “Zap” mark. The “Zap” mark is famous and
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`distinctive and is entitled to protection against dilution by blurring or tarnishment. The Zap mark
`is distinctive, has been used continuously and exclusively for years throughout the United States
`and the world to identify the Zapier’s application integration service, Zapier has extensively and
`continuously advertised and publicized the Zap mark for years, and the Zap mark has a high
`degree of recognition among consumers and app developers.
`
`COMPLAINT
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`Defendant Zoom commenced the use of the “Zapp” mark in commerce long after
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`the “Zap” mark had become famous and distinctive without authorization from Zapier.
`By using the similar and confusing “Zapp” mark in connection with its unproven
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`app integration product, Zoom trades on the distinctive brand and recognition of the “Zap” mark
`which has been used for years to describe the distinctive best-in-class app integration process
`that Zapier provides and sells.
`Zoom itself warns that its “new products may initially suffer from performance
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`and quality issues.” (Zoom 10Q for period ending July 31, 2020, at p.56).
`Thus, the use of the confusing “Zapp” term dilutes and/or is likely to dilute the
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`distinctive quality of the “Zap” mark and lessen the capacity of such mark to identify and
`distinguish Zapier’s services. Zoom’s use of “Zapp” in connection with an unproven, untested,
`and novel product involving app integration is also likely to tarnish the “Zap” mark and cause
`blurring in the minds of consumers around the distinctiveness of the “Zap” integration service
`and its exclusive association with Zapier, thereby lessening the value of the “Zap” mark as a
`unique identifier of Zapier and its service.
`At all relevant times, Zoom had actual and direct knowledge of Zapier’s prior use
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`and ownership of the “Zap” mark. Zoom’s conduct is therefore willful and reflects Zoom’s
`intent to exploit the goodwill and strong brand recognition associated with the “Zap” mark.
`By the acts described above, Zoom has intentionally and willfully diluted, and/or
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`likely to dilute, the distinctive quality of the “Zap” mark in violation of the Lanham Act.
`Zoom’s wrongful acts will continue unless enjoined by this Court.
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`Zoom’s acts have caused, and will continue to cause, irreparable injury to Zapier.
`Zapier has no adequate remedy at law and is thus is and will be damaged in amount not yet
`determined.
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`COMPLAINT
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`Case 3:20-cv-07506 Document 1 Filed 10/26/20 Page 15 of 18
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`SECOND CLAIM FOR RELIEF
`Common Law Trademark Infringement
`Zapier re-alleges and incorporates each and every allegation contained in the
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`paragraphs above with the same force and effect as if said allegations were fully set forth herein.
`Zapier has prior rights in the unregistered trademark and service mark “Zap.”
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`Zoom has infringed or will infringe on the “Zap” mark by using the similar and
`confusing term “Zapp.”
`Zoom’s use of “Zapp” has caused confusion and is likely to cause confusion or
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`mistake, or to deceive consumers as to the affiliation, connection or association of Zoom’s Zapp
`with Zapier’s Zap, or as to the origin, sponsorship, or approval by Zapier of Zoom’s service and
`commercial activities.
`Zoom’s infringing activity enables it to benefit unfairly from Zapier’s reputation
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`and success, thereby giving Zoom’s new, unproven, and untested product sales, use, and
`commercial value it would not have otherwise.
`Prior to Zoom’s use of the infringing mark, Zoom was aware of Zapier’s business
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`and had actual notice of the “Zap” mark used by Zapier – including republishing such mark(s) on
`behalf of Zapier.
`Zoom’s unauthorized use of the infringing mark is likely, if not certain, to deceive
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`or to cause confusion or mistake among consumers as to the origin, sponsorship, or approval of
`the new “Zapp” product and/or to cause confusion or mistake as to any affiliation, connection, or
`association between Zapier and Zoom with respect to “Zapp,” a new and unproven product.
`Indeed, such instances of consumer confusion have already occurred.
`Zoom’s infringement has been and continues to be intentional, willful, and
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`without regard to Zapier’s rights in the “Zap” mark.
`Upon information and belief, Zoom will gain profits by virtue of its infringement
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`of the “Zap” mark.
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`COMPLAINT
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`Zapier will suffer irreparable harm from Zoom’s infringement insofar as its
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`invaluable goodwill is being eroded by Zoom’s continuing infringement. Zapier has no adequate
`remedy at law to compensate it for the loss of business reputation, customers, market position,
`confusion of potential customers and app developers, and goodwill flowing from Zoom’s
`infringing activities. Zapier is entitled to an injunction against Zoom’s infringement of the
`“Zap” mark.
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`Unless enjoined, Zoom will continue its infringing conduct.
`THIRD CLAIM FOR RELIEF
`Unfair Business Practices (California Business and Professions Code § 17200, et seq.)
`Zapier re-alleges and incorporates each and every allegation contained in the
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`paragraphs above with the same force and effect as if said allegations were fully set forth herein.
`The acts of Zoom described above constitute unfair competition through
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`unlawful, unfair, or fraudulent business practices and/or unfair, deceptive, untrue, or misleading
`advertising, as defined by California Business & Professions Code § 17200, et seq.
`Zapier has valid and protectable prior rights in the “Zap” mark. The “Zap” mark
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`does not serve any function other than to identify Zapier as the source of the product and service.
`The mark is inherently distinctive, and through Zapier’s long and continuous use, has come to be
`associated solely with Zapier.
`Zoom’s actions are likely to cause confusion as to the source of the services
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`offered by Zoom and is likely to cause others to be confused or mistaken into believing that there
`is a relationship between Zoom and Zapier with respect to the Zapp product or that the Zapp
`product is affiliated with or sponsored by Zapier.
`The above-described acts and practices by Zoom are likely to mislead or deceive
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`the general public and therefore constitute unfair competition in violation of California Business
`& Professions Code § 17200, et seq.
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`COMPLAINT
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`The above-described acts also constitute unlawful acts in violation of the Lanham
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`Act and are therefore, unlawful acts in violation of California Business & Professions Code §
`17200, et seq.
`Zoom acted willfully and intentionally in using the “Zapp” mark with full
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`knowledge of Zapier’s prior rights in the “Zap” mark and that it could cause confusion or
`mistake or deceive customers into believing that there is an affiliation between Zoom and Zapier
`with respect to the unproven product, “Zapp.”
`The unlawful and unfair business practices of Zoom described above present a
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`continuing threat to, and are meant to deceive members of, the public in that Zoom will promote
`its unproven product by wrongfully trading on the goodwill of Zapier’s “Zap” mark.
`As a direct and proximate result of these acts, Zoom will profit from the strength
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`of the “Zap” mark. Further, Zapier will be injured in fact and will lose market share, money, and
`profits, and such harm will continue unless Zoom’s acts are enjoined by the Court. Zapier has no
`adequate remedy at law for Zoom’s violation of Zapier’s rights.
`Zoom should be required to restore to Zapier any and all profits earned as a result
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`of its unlawful and fraudulent actions, or to provide Zapier with any other restitutionary relief as
`the Court deems appropriate.
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`PRAYER FOR RELIEF
`WHEREFORE, Zapier prays for relief as follows:
`A temporary restraining order and orders preliminarily and permanently enjoining
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`Zoom and its officers, directors, agents, servants, employees, affiliates, attorneys,
`and all others acting in privity or in concert with it, and its parents, subsidiaries,
`divisions, successor, and assigns, from directly or indirectly infringing the “Zap”
`mark, from using “Zapp” as the term for its new application integration product,
`and from passing off Zapp as being associated with and/or sponsored or affiliated
`with Zapier;
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`COMPLAINT
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`Actual damages suffered by Zapier as a result of Zoom’s unlawful conduct, in an
`amount to be proven at trial, as well as prejudgment interest as authorized by law;
`An accounting of Zoom’s profits;
`A judgment trebling any damages award;
`Punitive damages;
`Restitutionary relief, including disgorgement of wrongfully obtained profits and
`any other appropriate relief;
`Costs of suit and reasonable attorneys’ fees;
`Any other remedy to which Zapier may be entitled.
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`DEMAND FOR JURY TRIAL
`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Zapier hereby demands a
`trial by jury on all issues raised by the Complaint.
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`Dated October 26, 2020
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`_/s/ Jonathan B. Gaskin_______
`KAUFHOLD GASKIN GALLAGHER LLP
`Jonathan Gaskin
`Quynh Vu
`Attorneys for Plaintiff Zapier, Inc.
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`COMPLAINT
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