Apple Sued Over Listing Memoji as One of Its Registered Trademarks Despite Ongoing Legal Battle [Updated]
Atlanta-based company Social Technologies LLC today filed a lawsuit against Apple that accuses the iPhone maker of falsely indicating that it holds the federal registration for the trademark Memoji in the United States.
Apple has included MEMOJI® in its U.S. trademark list on its website since June 2019, with the ® symbol signifying a federally registered trademark with the U.S. Patent and Trademark Office, despite the federal registration for the trademark belonging to Social Technologies LLC and not Apple.
Of note, Apple has successfully registered the Memoji trademark in some countries outside the United States, and several foreign countries also use ® to indicate that a mark is registered in that country, but fine print on Apple's website says its list is for trademarks and service marks in the United States.
Memoji is the name of Apple's personalized emoji feature for iPhone and iPad, introduced as part of iOS 12 at WWDC 2018. Apple has applied for two trademarks for the feature with the U.S. Patent and Trademark Office, but both are currently suspended due to ongoing litigation with Social Technologies LLC.
Social Technologies LLC offers an Android app named Memoji on the Google Play store, which it describes as "the world's best messaging app that will capture the facial expression of the end user with full-motion capabilities, and transpose the image into a custom, personalized emoji of the users actual face."
Social Technologies LLC already sued Apple for trademark infringement in September 2018, and alleges that Apple even unsuccessfully tried to purchase the rights to its then intent-to-use application in April 2016, yet Apple proceeded to add MEMOJI® to its trademark list in June 2019.
An excerpt from the complaint filed with a U.S. federal court in New York:
Social Tech visited Apple's Trademark List1 on June 17, 2019, a day before the deposition of Mr. Thomas La Perle, Apple's Senior Director of Copyright and Trademark in connection with Plaintiff's trademark infringement action against Apple in the Northern District of California. As of that date—June 17, 2019—MEMOJI was not listed on Apple's Trademark List.
However, immediately following Mr. La Perle's deposition, the Trademark List was updated to include the falsely designated MEMOJI® mark. On information and belief, Mr. La Perle orchestrated a scheme to undermine Social Tech's registered trademark rights and mislead the public by causing Apple to add the falsely designated mark to Apple’s Trademark List.
Social Technologies LLC is seeking an injunction to prohibit Apple from using the ® symbol in connection with Memoji, as well as an award of monetary damages and legal fees. The small company also wants a declaration that it owns the only federally registered Memoji trademark.
Update - Oct 1: Apple has replaced MEMOJI® with Memoji™ in its trademark list.
The full complaint, sent to us by law firm Pierce Bainbridge Beck Price & Hecht LLP, is embedded below.
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*edit actually some company Lucky Bunny registered it first and Apples trademarks look to be referring to that initial application as they may have purchase the rights to that, so technically Apple would have first usage, however SocialTech's mark registered and the original registration is dead..so it should be interesting
That said, the broader dispute is more complicated than some here might realize and than Social Technologies might want people to believe. Here's a rough timeline of the situation.
Another party applied for a trademark registration based on the word Memoji in 2014, claiming a first commercial use in 2014. That application was eventually abandoned, but it's still relevant here.
Despite that earlier application, Social Technologies claimed that it came up with the word Memoji in 2016 and it, also in 2016, applied for a trademark registration based on its intent to use the mark.
Social Technologies hadn't yet used the mark, and the mark hadn't yet been registered, when Apple announced a new feature - named Memoji - in June 2018.
Social Technologies claims a first commercial use date after the announcement made by Apple. Its trademark was registered in September 2018.
About a week after Social Technologies' trademark was registered, Apple filed a petition asking the TTAB to cancel that registration based on potential confusion with a trademark which had previously been used - the one for which registration was applied for in 2014. At some point Apple had gotten rights assigned to it by the party (or parties) which had used that trademark. Presumably Apple paid something for those rights.
The day after Apple filed asking to have Social Technologies' trademark registration cancelled, Social Technologies filed suit against Apple in a U.S. district court in California claiming, among other things, trademark infringement by Apple.
In October 2018 Apple applied for its own trademark registration based on the word Memoji. In January 2019 an office action was issued advising Apple that its registration would be denied based on potential confusion with Social Technologies' trademark. Apple later advised the examiner that it had challenged Social Technologies' registration (which it had done in September shortly after the trademark had been registered). Apple also asked to have its own application for registration suspended pending the outcome of its challenge to Social Technologies' registration. That challenge had itself already been suspended pending the outcome of the suit which Social Technologies brought against Apple.
So the TTAB is waiting to decide whether Social Technologies' trademark registration is valid, and then perhaps whether Apple is entitled to its own trademark registration. Apple's position - which it may prevail on - is essentially that it (through the rights it acquired from another party) was using the trademark before Social Technologies used it.
Now, there is something wrong that Apple did here but you missed it completely.