Bona Fide Hustlers: Apple Entitled to Cancellation of Social Tech’s MEMOJI TrademarkJuly 19, 2021

Following Apple’s introduction of its Memoji software in 2018, a company by the name of Social Technologies filed a lawsuit in the Northern District of California alleging trademark infringement and unfair competition. The basis for this lawsuit arose out of Social Tech’s registered MEMOJI trademark.

Social Tech had filed an intent-to-use trademark application for MEMOJI back in 2016, and the USPTO granted a Notice of Allowance on January 30, 2018, meaning that registration would be issued upon Social Tech providing proof of use of the mark in commerce. During this time, Apple approached Social Tech to purchase the rights to the MEMOJI mark. When Social Tech rejected the offer, Apple purchased the rights to a separate MEMOJI trademark application that had been filed by a third party in 2017, which was suspended pending final disposition of Social Tech’s application. Apple announced this on June 4, 2018 and released a public beta version of a new operating system incorporating Memoji software on June 25.

At the time of Apple’s announcement, Social Tech had not yet began development of its software or filed a Statement of Use with the USPTO. Nevertheless, Social Tech’s co-founder and president, Samuel Bonet, saw this as a “life changing” opportunity, stating in an internal email that it was “[t]ime to get paid, gentlemen.” With an eager eye towards litigation, Social Tech accelerated development of the software and released its own Memoji app on June 28. Two days later, Social Tech filed a Statement of Use with the USPTO. Bonet stated at the time: “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!”

Unfortunately for Bonet, the Northern District of California saw things a bit differently. The court granted summary judgment in favor of Apple on the ground that “no reasonable jury could find that Social Tech engaged in bona fide use of the MEMOJI mark in commerce within the meaning of the Lanham Act.” The court thus ruled that Apple was entitled to cancellation of Social Tech’s registration for the MEMOJI mark.

Earlier this week, the United States Court of Appeals for the Ninth Circuit affirmed the district court’s holding. The court explained that the Lanham Act requires a mark to be “used in commerce,” which means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” Without such use, a registration is invalid and the mark is not entitled to protection under the Lanham Act.

In concluding that Social Tech’s use of the MEMOJI mark was not bona fide use in commerce, the court analyzed Social Tech’s activities both before and after Apple’s June 4, 2018 announcement. The court found that before that date, Social Tech had only engaged in promotional activities. Social Tech had not developed any code for its software nor had it made any sales. Immediately following Apple’s announcement, Social Tech rushed to develop code, and release, its Memoji app, which ultimately contained numerous bugs. This suddenly rushed development, together with the timing and content of internal Social Tech emails, led the court to determine that Social Tech’s intention to develop and release its Memoji app was not a bona fide engagement of the mark in commerce. Rather, the court determined that the development and release of the Memoji app was for the purpose of reserving Social Tech’s rights to the MEMOJI mark and winning a lawsuit against Apple.

Based on this ruling, it looks like Bonet and his team at Social Tech will have some more time to pick out their Italian supercars.

The Ninth Circuit’s opinion is available here.

Nicholas J. Krob is an Associate Attorney in the Trademark, Licensing, and Litigation Practice Groups at McKee, Voorhees & Sease. For additional information, please visit www.ipmvs.com or contact Nicholas directly via email at nicholas.krob@ipmvs.com.