ZolaSuite’s website says it is the “All In One Practice Management System”

Executive Data Systems, the Florida company that sells the law practice management platform PerfectLaw, has sued another practice management company, Zola Media, which sells the cloud-based system ZolaSuite, alleging that Zola is violating its trademark in the phrase “all-in-one.”

In addition, I am told that EDS has sent cease-and-desist letters to at least two other practice management companies, CosmoLex and MyCase, both of which use the phrase “all in one” in their marketing. While CosmoLex has confirmed this, MyCase executives declined comment. Counsel for EDS did not respond to an email sent to him.

In the lawsuit against Zola, filed Aug. 21 in U.S. District Court in Manhattan, EDS alleges that it began using the all-in-one trademark in 2000 in connection with its law office management software and services and that it registered the trademark in 2012.

Zola, on its website, markets its software as the “all in one practice management system.” Similarly, CosmoLex describes itself as an “all in one web-based system” and MyCase says it is “an all-in-one, affordable and intuitive legal practice management software.”

EDS alleges in its lawsuit that Zola’s use of this trademark will cause confusion among potential customers and deceive them as to the source of Zola’s software and cause to the public to believe that Zola’s software originated from or is associated with EDS. This will cause damage to EDS’s business and its goodwill, it says.

In an answer and counterclaim filed Nov. 6, Zola denies that it is violating EDS’s trademark or that it is using the trademark in any way meant to identify EDS as a source of its software.

Its counterclaim against EDS asserts that it is the “victim of trademark bullying” and that “EDS is wielding its purported trademark registration in an effort to stifle a small competitor from using generic verbiage in connection with the promotion of its goods and services.”

Zola further alleges that EDS’s trademark should be cancelled because the phrase “all-in-one” is a widely used generic term. It notes that a number of practice management applications use the phrase in their marketing and that various articles in legal publications also use the phrase to describe a type of practice management application.

  • Mark Mauriello

    How did they even get the registration? What was unique enough to box out all of those who use in a business context this every day phrase commonly used around the house? The hyphenation? Would love to hear the answer from an IP attorney; my understanding of the law is quite different from this result.

    • Bob Ambrogi

      I wondered the same thing.

      • Mark Mauriello

        Thanks Bob. Love this site even if it is mostly over my head. Keep up the incredibly good and necessary work. If not you, who, if not now when? Countless thank yous.

    • Because the U.S. Patent and Trademark Office often allows fraudulent, common and generic trademark applications. Perhaps this is because the more trademarks the USPTO allows, the more they make in registration and renewal fees?

      And if Executive Data Systems and their attorneys truly believe in their trademark claims, they should be posting comments on this and other articles about their trademark disputes.

  • That’s like the trademark office allowing Subaru to register the generic phrase “all-wheel drive” as a trademark and then Subaru suing the numerous other auto manufacturers like Audi that also sell all-wheel drive vehicles.

    The purpose of trademark laws are to protect consumers from confusion, not to benefit litigious companies like Executive Data Systems that use money-grubbing trademark attorneys to register common, generic terms because they prefer litigation over innovation.

    It wouldn’t surprise me if their law firm, Allen, Dyer, Doppelt, & Gilchrist, P.A., doesn’t even have any of its own trademarks. Many trademark law firms hypocritically convince their clients to pay them thousands of dollars registering and defending trademarks, while never doing so themselves (and their excuses for not following their own advice can be surprisingly lame).

  • GeorgeJ.

    Here’s hoping no one’s trademarked “robust.”

  • Mark Mauriello

    My further understanding from my limited reading of articles on the topic, is that the case law and statues presume is that the applicant conducted thorough research prior to applying for the mark and concluded that it is the first ever to have used (published) the mark in commerce. If registrant did not (some other individual can prove prior use), the registration can be defeated. I would love to hear Mr. Allen’s wisdom, as he appears to be the lead attorney at the firm, and be educated regarding these distinctions.

    • According to the online records of the trademark office, David L. Sigalow is the attorney for their ALL-IN-ONE “trademark.” But I expect neither Mr. Sigalow nor anyone from Executive Data Systems will want to publicly try to explain their controversial trademark claims. Most trademark attorneys seem to be a bit paranoid of publicly speaking out about their work or their client’s trademarks, and even more paranoid of their clients publicly speaking out about their trademarks.

  • Mark Mauriello

    That’s a file I would love to see. I expect the submittals are available under FOIL.

    • Bob Ambrogi

      No need for a FOIL. I’ve linked to the documents in my post above.

  • Not surprisingly, Zola’s answer says “there is no evidence of actual confusion.” Evidence of actual confusion should be required before attorneys send out threatening cease-and-desist letters, and certainly before filing a lawsuit claiming trademark infringement.

    Plus buyers of law practice management software are presumably fairly sophisticated. So it’s highly doubtful that many if any would be confused over use of such a generic and widely used phrase as “all-in-one.”

    I also believe attorneys who encourage and engage in these trademark “disputes” w/out any evidence of actual confusion, are churning client files to generate thousands in unnecessary fees.

  • Allen King

    “All-In-One” looks generic. I have heard this term like million times since I started hearing. Trademark office screwed up on this one.

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