Visiting Judge Says Social Tech Failed to Make Good-Faith Use of ‘Memoji’ Mark in Commerce
By a MetNews Staff Writer
The Ninth U.S. Circuit Court of Appeals yesterday affirmed a District Court decision invalidating the trademark registration of the word “MEMOJI” by the maker of an Android app available on the Google Play store, holding that it’s Apple Inc. that has entitlement to the mark.
Losing the battle is Social Technologies LLC (“Social Tech”) which on April 1, 2016 filed a notice of intent to use the mark. But, the Ninth Circuit said, in affirming a summary judgment awarded to Apple by District Court Judge Vince Chhabria of the Northern District of California, the company did not proceed to make a bona fide use of the mark in commerce until much later—and too late.
In one of two trademark applications, Apple describes “Memoji” in these words:
“Computer application software for mobile phones and other computing devices, namely, software for creating and sending emoticons; Downloadable software in the nature of a mobile application for creating and sending emoticons.”
This is Social Tech’s description:
“Computer application software for mobile phones, namely, software for recording, editing, and distributing images, videos, and audio; computer application software for mobile phones, computers, and tablets, namely, software for recording, editing, and distributing images, videos, and audio; downloadable mobile applications for recording, editing, and distributing images, videos, and audio; downloadable software in the nature of a mobile application for recording, editing, and distributing images, videos, and audio.”
It’s application contains a mark drawing:
It is described as consisting “of the stylized wording ‘MEMOJI’ appearing in white on a black background with a white oval with gray highlighting replacing the letter ‘O’, a woman’s cross-eyed face appearing within the oval with brown hair, tan skin, brown eyebrows, black and white eyes, pink cheeks and red lips” with “[a] partial reflection of the wording and design appears inverted directly below ‘MEMOJI’ in gray, tan, brown, black red and pink.”
Users can customize the display by inserting an image replacing that of the cross-eyed woman.
Opinion Describes Race
United States Court of International Trade Judge Jane A. Restani, sitting by designation, authored the opinion was. It describes the race between Apple and Social Tech:
June 4, 2018: Apple announced it had purchased to right to exclusive use of the mark claimed by Lucky Bunny LLC which had filed an April 3, 2017 application for trademark registration competing with Social Tech’s;
June 25, 2018: Apple released a beta version of an operating system for its iPhones and iPads which utilized Memoji software.
June 28, 2018: Spurred by Apple’s activity, Social Tech released on the Google Play Store its own Memoji mobile phone app.
June 30, 2018: Social Tech filed in the U.S. Patent and Trademark Office (“USPTO”) a ‘Statement of Use’ of the mark in commerce.
Sept. 17, 2018: Apple launched a new operating system—iOS 12—which featured its Memoji software.
Sept. 18, 2018: The U.S. Patent and Trademark Office (“USPTO”) granted trademark registration to Social Tech.
Sept. 26, 2018: Apple brought a proceeding in the USPTO seeking cancellation of Social Tech’s mark.
Sep 27, 2018: Social Tech brought suit against Apple for trademark infringement.
Restani agreed with Chhabria that no reasonable jury could disagree with Apple’s contention that Social Tech filed its application with the USPTO in an effort to reserve rights for future use, and that there had not been a bona fide use of the mark in commerce, as required by the Lanham Act.
Explaining at the outset, in a footnote, that “ ‘MEMOJI’ refers to the use of the word as a trademark, whereas ‘Memoji’ refers to the name of the mobile phone application,” she wrote:
“Social Tech’s early activities fail to use the MEMOJI mark in a sufficiently public manner to establish rights under the Lanham Act….While more than two years went by from the filing of its initial intent-to-use application, Social Tech developed no code for its Memoji application and had no sales. The scope of Social Tech’s activities prior to Apple’s announcement of its Memoji application—its maintenance of a website containing promotional videos, early stage business planning, a single internal $100,000 investment, and the unsuccessful solicitation of any external investors—was not sufficiently public to establish trademark rights, whether or not Social Tech executed these activities with a good faith intent to eventually use the mark in commerce.”
The jurist said the evidence, including Social Tech’s email correspondence with its developers, “compels the conclusion that Social Tech’s intention to develop and release its Memoji application was not a bona fide engagement of the mark in commerce, but merely an attempt to reserve its MEMOJI trademark and provide a basis for its lawsuit against Apple.”
The case is Social Technologies v. Apple, 20-15241.
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