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If you own a cellphone, computer, or television you have probably heard of the technology giant, Apple Inc. Many companies are eager to challenge Apple’s dominance in the tech market, including a small, Atlanta-based company called Social Technologies, LLC. When Social Tech filed its Apple Memoji trademark lawsuit in 2018 it was like the classic tale of David versus Goliath... with a surprise twist.
The dispute began when both companies wanted to use the word “Memoji” to describe their company’s emoji app. Social Tech had previously filed for trademark registration of the word, “MEMOJI” in 2016. So when Apple launched its memoji app in 2018, Social Tech jumped at the opportunity to initiate trademark litigation against Apple. However, Social Tech was not properly prepared and through arrogance and greed, it sabotaged its legal position before the Apple lawsuit was filed.
In April 2016, Social Tech filed an “intent-to-use” trademark application with the U.S. Patent and Trademark Office (USPTO). This type of application indicates a future intention to produce a product and place it into commerce while protecting the product name, mark, or logo in the meantime. The problems started after the application was filed because Social Tech did almost nothing to further the production or sale of their memoji product, until 2018.
When Apple announced the launch of its own Memoji app in June 2018, Social Tech finally began developing its app and eventually pushed a substandard product to market. Before Apple’s announcement, Social Tech had merely created a promotional website, unsuccessfully solicited investors, and made no effort to start the coding needed to support the app.
After Apple’s Memoji launch, Social Tech’s CEO, Samuel Bonet sent an inner-office email that proved to be one of the most damaging pieces of evidence in this case. Bonet’s email read,
“We are lining up all of our information, in preparation for a nice lawsuit against Apple, Inc! We are looking REALLY good. Get your Lamborghini picked out!”
The court focused on this email, Social Tech’s intentions, and its actual use of the trademark registration to determine if it had the right to protect the word memoji.
On September 27, 2018, Social Tech filed its Apple lawsuit claiming trademark infringement among other allegations. To end the litigation as soon as possible, Apple filed a motion for summary judgment arguing that Social Tech did not have trademark rights to the Memoji name.
US District Court Judge Vince Chhabria issued his ruling in December 2018 granting Apple’s motion and ending the Apple trademark case at the trial level. The judge specifically relied on multiple communications from CEO Bonet that Social Tech would rush its app after Apple’s announcement, “solely to reserve its rights in the mark and boost its trademark case against Apple.” Judge Chhabria also stated, "The undisputed evidence in the record points in only one direction: Social Tech developed and posted its app with a singular focus on securing registration to sue Apple, without any good-faith regard to the commercial viability of its product."
On July 24, 2020, Social Tech appealed to the 9th U.S. Circuit Court of Appeals. In July 2021 the appellate court affirmed the district court’s ruling in favor of Apple and agreed that Social Tech only created its Memoji app to obtain a federal trademark registration and support an infringement case against Apple. U.S. Senior Judge Jane Restani specifically ruled that Social Tech had no “protectable rights regarding the use of the word ‘Memoji’ as the company failed to use it legitimately in commerce.”
The appellate court determined that Social Tech failed to take any action to develop and produce a viable product under the name Memoji until after Apple launched its product with the same name. The court also found that after the Apple Memoji launch, Social Tech’s “defective” app was carelessly pushed to market to support the Apple trademark litigation and was not a “bona fide use” of the Memoji mark in commerce.
In a final, crushing blow, the appellate court ordered the USPTO to cancel Social Tech’s trademark registration. The attorneys for Social Tech have stated they will appeal the decision to the U.S. Supreme Court.
The appeals court in the Social Tech v. Apple trademark lawsuit agreed that Social Tech rushed its product through development and released a low-quality app into the market, but these acts were not the determining factors for the final decision. Instead, the court found that overall, Social Tech had no genuine commercial purpose or intention to sell its app; it was simply seeking a financial windfall through trademark litigation.
The court’s ruling confirms that defending your trademark rights requires more than filing for trademark registration. You must take further action to show legitimate use of the mark on a product that is then entered into the stream of commerce. In general, trademark registration rights will not be enforced on behalf of a business that is merely trying to keep someone else from using a name or logo.
Federal trademark rules are complicated and precise. Trademark holders must comply with specific requirements when applying for a registered trademark and then follow through with continued use of the mark in commerce as proposed in the application. Protecting a trademark against infringement is not an easy process. If you are engaged in trademark litigation, you need a skilled trademark lawyer to protect your future.
Turn to the attorneys at the Trademark Lawyer Law Firm who are dedicated to helping businesses protect their reputation and future success. We can help you obtain and protect your trademark with solid legal advice every step of the way. Contact us online or at 888-504-0336 to schedule a free consultation today.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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