Ping vs. Ping: How an email app received a cease-and-desist from a golf company
Things were going well for Guy Gamzu and Erez Pilosof. Their email app Ping had been well-received by the media (including PandoDaily). More than 40,000 people asked to be notified when the app was released.
The app was modeled after the many messaging services that companies like WhatsApp, Facebook, and WeChat have released in their fight to dominate the way we communicate through our smartphones. Instead of trying to build another me-too messaging service, though, Gamzu and Pilosof decided to build an app that combined the design and features of those apps with the near-ubiquity of email. The result was an interesting app that re-considered the way we should interact with email on mobile devices more than other apps (Mailbox, Boomerang) that came before.
Then, just a week before the app was supposed to debut, they received a letter from Karsten Manufacturing Corporation demanding that they change their product's name; give the domain they registered to Karsten; prepare all marketing materials for destruction; and "remove any and all online references" to the product, "including but not limited to references on webpages located through Twitter, Tumblr, LinkedIn, Facebook, and other social media as well as Google and other online search engines."
In a letter to Gamzu and Pilosof seen by PandoDaily, Karsten explains that it owns the "ping" trademark for everything from "chat room services for social networking" to "computer software for authoring, downloading, transmitting, receiving, viewing, playing, storing, and organizing multimedia content." Gamzu and Pilosof's email app obviously fell under Karsten's wide umbrella of trademarked use-cases for the brand.
Gamzu and Pilosof spent weeks conferring with lawyers, reaching out to Karsten, and dodging people who had pre-registered for the app and were wondering why it missed its September 18 launch date. Their email app had been delayed by Karsten and the trademarks it earned for its golf company, also named Ping.
Ping sells golf clubs, carrying bags, and branded apparel on its website and through a variety of resellers. It also offers the iPing app, which is billed as a "free, wireless putting-improvement tool that helps you improve your consistency and helps you establish your Putting Handicap," another seemingly common phrase that Ping has apparently trademarked.
According to the letter sent to Gamzu and Pilosof, the company believed that the duo was trying to use its brand to attract and confuse customers. (Which shows the esteem Ping holds for its customers -- When was the last time a golf company released an email app, or the last time a putting app was confused with literally any other kind of software? Exactly no times.)
"The fact of the matter is that we got a very pressing type of letter from what apparently seems to be a powerful company with a law office that serves people on a regular basis," says Gamzu. (Karsten did not respond to a request for comment.)
"We decided that although we would very much like to be righteous on this and remove this kind of behavior of trolling by certain large and affluent companies to startups, we should really focus on the benefit of our users."
The duo approached their lawyers, who told them that, even if they were to combat the cease-and-desist, it would likely become a long, costly legal battle. So they began searching for new names with their lawyers in tow, hell-bent on finding a name for which they couldn't be sued or told to stop using somewhere down the road.
"I've been part of many startups," Gamzu says, "but I've never had to spend so much money before we even start, just to come up with a name."
Incidentally, this is why so many startups launch with goofy, nonsensical names that are hard to spell and even harder to pronounce. Normal, printed-in-the-dictionary words like "ping" are likely to fall under some company's trademark, even if they don't offer products even remotely similar to those the startup might create.
"It can happen to any startup, any day. Traditional companies realize the new trend towards mobile devices and apps," Gamzu says. "They don't know what to do about it, but they want in on the action so they put out certain trademarks and whenever possible they booby-trap anyone who passes nearby."
Gamzu and Pilosof intend to release the app formerly known as Ping after they find a new name, update the app, and re-submit it to the App Store. The app has already been delayed by nearly a month -- right now they say that their focus is on getting it onto the devices of the tens of thousands of people who have already expressed interest in the product.