dato vs. datto

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COMPLAINT FOR DECLARATORY JUDGMENT

-1- WILSON SONSINI GOODRICH & ROSATI 701 Fifth Avenue, Suite 5100

Seattle, WA 98104-7036 Tel: (206) 883-2500 Fax: (206) 883-2699

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON

AT SEATTLE

DATO, INC., a Delaware corporation,

Plaintiff,

v. DATTO, INC., a Delaware corporation,

Defendant.

CASE NO.: COMPLAINT FOR DECLARATORY JUDGMENT JURY TRIAL DEMANDED

Dato, Inc. (“Dato”) alleges as follows:

THE PARTIES

1. Dato (pronounced “Day-toe”), is a Delaware corporation with its principal place

of business at 936 N 34th St., Suite 208, Seattle, Washington 98103. Dato is a machine-

learning, or artificial intelligence, platform that provides data analytics services.

2. Dato is informed and believes, and therefore alleges, that Datto, Inc. (“Datto”)

(pronounced “Daat-toe”) is a Delaware corporation with its principal place of business at 101

Merritt 7, 7th Floor, Norwalk, Connecticut 06851. Dato is informed and believes, and therefore

alleges, that Datto provides data storage and recovery solutions.

3. This action seeks a declaration that Dato’s use and registration of the trademark

DATO do not, and will not, infringe upon or otherwise violate the trademark-related rights, if

any, of Datto.

Case 2:15-cv-01502-RSL Document 1 Filed 09/21/15 of 9

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-2- WILSON SONSINI GOODRICH & ROSATI

701 Fifth Avenue, Suite 5100 Seattle, WA 98104-7036

Tel: (206) 883-2500 Fax: (206) 883-2699

JURISDICTION AND VENUE

4. This court has original jurisdiction over the claim for declaratory relief under

28 U.S.C. § 2201 because Dato brings the action to determine a question of actual controversy

between the parties arising under the trademark laws of the United States.

5. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b) because

a substantial part of the events giving rise to this complaint occurred in this judicial district.

BACKGROUND

Dato’s Use of the DATO mark

6. On January 8, 2015, GraphLab, Inc., founded by Dr. Carlos Guestrin, the

Amazon Professor of Machine Learning in Computer Science & Engineering at the University

of Washington, changed its name to Dato, Inc. to convey the full range of the company’s

machine learning tasks—not just graph analysis—and to mark the evolution of the company

into an industry leader in artificial intelligence following a successful round of funding.

7. Specifically, Dato provides a machine learning platform, i.e., intelligent

software, which engineers and data scientists use to build systems that “learn” to identify and

analyze the information in databases, from tables to graphs to text to images. These intelligent

applications provide predictions for a myriad of uses, including recommenders, sentiment

analysis, fraud detection, churn prediction and ad targeting. Dato provides organizations of all

sizes and across industries with advanced big data analytics, enabling them to build scalable

data products quickly and gain better and faster insights from their big data.

8. Dato is the owner of the Internet domain name <dato.com>, where Dato hosts a

website prominently featuring the DATO mark.

9. Dato applied to register the mark DATO with the United States Patent and

Trademark Office on January 28, 2015, based on its bona fide intent to use the mark in

commerce, in connection with the following goods and services:

“[c]omputer software for machine learning in the field of transaction processing to upload transactional data, provide statistical analysis, and produce notifications and reports; computer software, namely, software development tools for data analytics, data mining and machine learning in


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Tel: (206) 883-2500 Fax: (206) 883-2699

mobile internet applications and software for data analytics; software development tools; computer software for the collection, editing, organizing, modifying, book marking, analyzing, transmission, storage and sharing of data and information; computer software for creating searchable databases of information and data” in International Class 9;

“[d]ata mining; data mining consulting services; software as a service (SAAS)

services, namely, hosting software for use by others in database management and data analysis; providing temporary use of nondownloadable computer software for machine learning in the field of transaction processing to upload transactional data, provide statistical analysis, and produce notifications and reports; providing temporary use of nondownloadable computer software development tools for the creation of software for data analytics; software development tools; providing temporary use of nondownloadable computer software for the collection, editing, organizing, modifying, book marking, analyzing, transmission, storage and sharing of data and information; providing temporary use of nondownloadable computer software for creating searchable databases of information and data; consulting services in the fields of database management, data analysis and machine learning; technical consulting services in the fields of database architecture and evaluation and implementation of software for data analytics” in International Class 42.

Dato’s trademark application has been assigned Serial No. 86517116 and is pending.

10. Since its launch in January 2015, Dato’s DATO mark has been featured in

prominent news reports and articles (Wired, The Wall Street Journal, The Seattle Times,

Geekwire, etc.) across the United States and internationally. In addition, DATO has achieved

substantial commercial success as many well-known companies already use Dato’s software.

For example, Pandora uses Dato’s software to help drive its music recommendation service.

Real estate database Zillow uses the software to fine-tune its estimates of how much properties

cost in the market. Johnson & Johnson uses Dato’s platform to help parents find important

pregnancy and parenting advice on their popular BabyCenter.com website. Dato’s other clients

include Salesforce, Symantec, PayPal, Crosswise, Hotel Tonight, Bosch, ExxonMobil and

Cisco, amongst others.

11. Dato’s tools have been deployed in a broad range of areas, from fraud detection

to analysis of customer sentiment, and have the ability to be expanded across industries and

tailored to very specific customer needs. The data scientists and engineers who use Dato’s

software typically have advanced degrees, have strong programming and mathematical skills,

and need to integrate a wide range of software tools in order to build their applications. As


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Tel: (206) 883-2500 Fax: (206) 883-2699

such, Dato’s customers are highly sophisticated and purchase Dato’s products and services with

very particular uses in mind. They do not enter the decision to purchase such products without

considerable research and input across departments.

12. As a result of the success of Dato’s unique machine learning platform and

services, when members of the general public, particularly within the artificial intelligence and

technology industries, see or hear the mark DATO, they associate it with Dato’s cutting edge,

artificial intelligence platform and services.

13. Dato intends to continue using the DATO mark in connection with its platform

and services.

Datto’s Assertion of Trademark Rights

14. According to its website, Datto is a provider of “data backup, recovery and

business continuity solutions.” A recent Forbes article entitled “Datto: The Secret Tech

Money-Making Machine You’ve Never Heard Of” describes Datto’s business as “the business

of information recovery,” providing data storage hardware with a subscription service that

allows customers to revive their network instantly in the event it shuts down or is otherwise

breached.

15. So whereas Dato’s machine learning platform allows companies to mine their

data, analyze it in various forms, and learn from it using artificial intelligence techniques,

Datto’s business pertains to the routine backup of data. And whereas Dato’s customers use its

customizable software to mine, understand and learn from specific big data sets they have

acquired, Datto provides its customers with physical hardware and virtual backup devices to

store and preserve their data in raw form.

16. Dato’s and Datto’s purchasers consist of highly trained data scientists and other

skilled technology professionals within an organization’s IT department. These individuals are

likely to research extensively the service providers they choose to analyze and to store their

data, both of which are integral decisions for any size company, thus making it unlikely that

any real-world confusion would occur. In addition, the relatively high prices of both Dato’s and


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Tel: (206) 883-2500 Fax: (206) 883-2699

Datto’s products do not lend themselves to impulse purchases and often require cross-

departmental approval, further eliminating any chance of actual marketplace confusion.

17. On January 30, 2015, Datto sent Dato a cease and desist letter claiming

propriety rights in its DATTO mark and potential likelihood of confusion between the DATO

and DATTO marks. Datto demanded that Dato cease use of its DATO mark immediately.

18. On February 20, 2015, after investigating Datto’s claims, Dato responded to

Datto’s letter, explaining the distinct differences between the companies’ services, the

sophistication of their respective customers, the relatively high prices of the companies’

products, all of which clearly distinguish the companies’ respective marks and undermine any

concern that the marks would be confused by those in the market looking to purchase very

different products and services.

19. On April 10, 2015, Datto replied to Dato’s letter, claiming that it offered a range

of “business continuity cloud services” that were similar to Dato’s, rebuffing Dato’s offer to

co-exist, even pursuant to the terms of an agreement, and demanding that Dato immediately

cease use of its mark.

20. After further exchanges between the parties, on September 17, 2015, Datto sent

an email to Dato claiming that “we just don't see a way your company can continue to use the

DATO mark without causing confusion,” that “[t]his back and forth has gone on long enough

and our position is very clear” and that if Dato would not “commit to stop using the DATO

mark” by September 21, that Datto would “commence appropriate legal action.”

21. While Datto tries to characterize its business broadly, data backup hardware and

remote backup are clearly distinct from artificial intelligence and data analytics. Dato’s

sophisticated customers, who can tailor its products to suit their data analytics needs,

understand that difference. And Datto’s customers, who are in the market for data backup

solutions, are not going to confuse Dato’s customizable software for data analytics with data

backup hardware. Because there is no potential risk of real-world confusion, Dato intends to


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Tel: (206) 883-2500 Fax: (206) 883-2699

continue use of its DATO mark and remains confident the two companies can comfortably

coexist.

FIRST CAUSE OF ACTION

(DECLARATORY RELIEF) 22. Dato realleges and incorporates by reference paragraphs 1 through 21 above as

though fully set forth herein.

23. As a result of the actions and statements of Datto, there is an actual controversy

between Dato and Datto as to the parties’ rights and legal relations associated with each party’s

use of their respective marks. This controversy between the parties is substantial, concrete, and

immediate. Based on Datto’s correspondence, Dato has a reasonable and real apprehension

that it faces an infringement lawsuit by Datto and that Datto will challenge and seek to disrupt

any expansion of Dato’s use of the DATO mark.

24. Dato has and intends to continue to use the DATO mark in interstate commerce.

Dato is informed and believes, and therefore alleges, that it is Datto’s position that Datto has

made use of the mark DATTO in a manner justifying Datto to sue Dato immediately for

trademark infringement and other legal violations.

25. Dato’s use of the DATO mark does not infringe on or violate any federal or state

trademark, trade name, or related rights of Datto.

26. Dato’s use of the DATO mark will not infringe on or violate any federal or state

trademark, trade name, or related rights of Datto.

27. Dato’s rights to the DATO mark are superior to or distinct from the rights Datto

alleges in its DATTO mark.

28. An actual justiciable controversy within the meaning of 18 U.S.C. § 2201 exists

between Dato and Datto concerning the use of the DATO mark and the respective trademark

rights of the parties. A judicial determination is necessary and appropriate at this time in order

to resolve the issues of the trademark rights of Dato and the conflicting claims of Datto, and in

order that the parties may ascertain their respective rights and obligations if any.


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Tel: (206) 883-2500 Fax: (206) 883-2699

29. Dato does not engage in any activities that harm or threaten any lawful rights of

Datto and is entitled to a declaration to that effect in this action.

Wherefore, Dato prays for relief as set forth below.

PRAYER FOR RELIEF

Wherefore, Dato prays for judgment as follows:

30. That this Court declare that Dato’s use and registration of the DATO mark do

not infringe upon, dilute, or otherwise violate any valid right of Datto under applicable federal

or state law.

31. That this Court declare that Dato’s rights in the DATO mark are superior to or

distinct from the rights Datto alleges in its DATTO mark.

32. That this Court declare that Dato’s activities have not caused any harm to Datto

or unjust enrichment to Dato.

33. That this Court declare that Dato is not liable to Datto.

34. That, by way of further relief, this Court grant a permanent injunction enjoining

and restraining Datto, its officers, directors, agents, servants, employees, and attorneys, and

those in active concert or participation with them, from directly or indirectly charging

infringement, dilution, or other legal violation, or instituting any action for infringement,

dilution, or other violation of alleged rights of Datto in the mark DATTO against Dato or any

of Dato’s agents, direct or indirect customers, or any person, by reason of the use or registration

of Dato’s DATO mark.

35. That this Court award to Dato its reasonable costs, disbursements, and attorneys’

fees incurred in defending its rights to the DATO mark against the claims and allegations of

Datto.

36. That this Court grant such other and further relief as this Court may deem just

and proper.


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Tel: (206) 883-2500 Fax: (206) 883-2699

Dated: September 21, 2015 /s/ Gregory L. Watts

Gregory L. Watts, WSBA #43995

Aaron D. Hendelman, WSBA #38597 WILSON SONSINI GOODRICH & ROSATI

701 Fifth Avenue, Suite 5100

Seattle, WA 98104-7036

Telephone: (206) 883-2500

Facsimile: (206) 883-2699

Email: [email protected]


Attorneys for Plaintiff Dato Inc.


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Tel: (206) 883-2500 Fax: (206) 883-2699

DEMAND FOR JURY TRIAL

Dato hereby demands trial by jury of all issues triable by a jury.

Dated: September 21, 2015 /s/ Gregory L. Watts

Gregory L. Watts, WSBA #43995

Aaron D. Hendelman, WSBA #38597 WILSON SONSINI GOODRICH & ROSATI

701 Fifth Avenue, Suite 5100

Seattle, WA 98104-7036

Telephone: (206) 883-2500

Facsimile: (206) 883-2699



Attorneys for Plaintiff Dato Inc.


dato vs. datto

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