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.

Social Technologies, LLC v. Apple, Inc. et al by MacRumors on Scribd

Top Rated Comments

(View all)
Avatar
13 months ago
Well if I'm reading this right Memoji is a registered trademark of Social Technologies LLC and Apple does not have the right to use that trademark (in the US at least?) without purchasing the rights from Social Technologies LLC (or purchasing Social Technologies LLC). Apple's actions here appear to be indefensible.
Score: 10 Votes (Like | Disagree)
Avatar
13 months ago
Surely no one can defend Apple's false advertising, breaking of federal law, and IP theft...
Score: 8 Votes (Like | Disagree)
Avatar
13 months ago


Just buy the company Apple, be done.

Apparently they tried:

[Social Technologies LLC] alleges that Apple even unsuccessfully tried to purchase the rights to its then intent-to-use application in April 2016

Score: 8 Votes (Like | Disagree)
Avatar
13 months ago


Apparently they tried:


Well if I'm reading this right Memoji is a registered trademark of Social Technologies LLC and Apple does not have the right to use that trademark (in the US at least?) without purchasing the rights from Social Technologies LLC (or purchasing Social Technologies LLC). Apple's actions here appear to be indefensible.


If true, Apple has to stand to the law. That’s utterly important for it’s own credibility.

From the registration sequence they registered MEmoji (social tech llc) in 2017 with an intent to use but did not submit anything showing its use, it was about to be abandoned and Apple registered theirs during this time and then finally Social Tech LLC provided specimens once Apples gained traction, so they obviously were looking to score some $. To their advantage they registered the mark first...so Apple now has to prove its not a conflict or come to some agreement. I dont really think Apple has ill intent but the other company clear is expecting to suck some $$ out of apple.

*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
Score: 8 Votes (Like | Disagree)
Avatar
13 months ago
I don't know why Apple listed Memoji as a registered trademark, at least without changing the fine print referred to in the OP which would suggest that it's a U.S. trademark registration. Maybe that was an error.

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.
Score: 8 Votes (Like | Disagree)
Avatar
13 months ago


Surely no one can defend Apple's false advertising, breaking of federal law, and IP theft...

lol, if you make it that easy.... There is no false advertising. If a federal law is broken why is it a civil suit? If you think this is IP theft you're really off.

Now, there is something wrong that Apple did here but you missed it completely.
Score: 7 Votes (Like | Disagree)

Top Stories

Here's How You Can Download iOS 14 and iPadOS 14 Around the World [It's Out]

Wednesday September 16, 2020 2:36 am PDT by
Apple's official public release of iOS 14 and iPadOS 14 dropped on Wednesday, September 16, just a day after the company released the Golden Master to third-party developers. Also set to be made available to the general public for the first time are watchOS 7 and tvOS 14. Getting Started With iOS 14 Video Click image to watch iOS 14 Getting Started While that's left a lot of developers...

When Will the iPhone 12 Launch? Here's What We Know

Wednesday September 16, 2020 6:12 am PDT by
Yesterday's "Time Flies" Apple event saw the release of the Apple Watch Series 6, Apple Watch SE, iPad 8, and iPad Air 4, but no new iPhone models. Rumors before the event strongly alleged that it would not see the unveiling of new iPhones, with many reports pointing to an October launch. The lack of new iPhone models yesterday seems to confirm that the iPhone 12 lineup will not appear...

Apple Releases iOS 14 and iPadOS 14 With Home Screen Redesign, App Library, Compact UI, Translate App, Scribble Support, App Clips, and More

Wednesday September 16, 2020 12:48 pm PDT by
Apple has released iOS 14 and iPadOS 14, the newest operating system updates designed for the iPhone and iPad. As with all of Apple's software updates, iOS 14 and iPadOS 14 can be downloaded for free. iOS 14 is available on the iPhone 6s and later, while iPadOS 14 is available on the iPad Air 2 and later. The updates are available on all eligible devices over-the-air in the Settings app. To ...

Apple Updates AirPods 2 and AirPods Pro Firmware to Version 3A283

Monday September 14, 2020 11:24 am PDT by
Apple today released new 3A283 firmware updates for the second-generation AirPods and the AirPods Pro. The second-generation AirPods are being updated from the 2D15 firmware they were previously running, while the AirPods Pros are being updated from the 2D27 firmware they had installed previously. Apple does not provide details on what's included in refreshed firmware so we don't know what's ...

Spotify Says Apple One Bundle Will Cause 'Irreparable Harm to Developer Community'

Tuesday September 15, 2020 12:26 pm PDT by
Apple today announced Apple One, a series of new subscription bundles that provide access to various Apple services at a combined monthly price. In response, Spotify sent out statements (via Peter Kafka) to the press decrying Apple's anti-competitive behavior and calling on "competition authorities" to stop Apple before it is able to cause "irreparable harm" to developers.Once again, Apple...

iOS 14, iPadOS 14, watchOS 7, and tvOS 14 Will Be Released September 16

Tuesday September 15, 2020 11:06 am PDT by
Apple today announced that iOS 14, iPadOS 14, watchOS 7, and tvOS 14 will be officially released on Wednesday, September 16. Apple has seeded the final Golden Master beta versions of each update to developers in advance. ‌iOS 14‌ and iPadOS 14 introduce dozens of new features, including a redesigned Home Screen that supports widgets on the iPhone and iPad for the first time. For more...

New AirPods Pro Firmware Introduces Spatial Audio Support and Automatic Switching

Monday September 14, 2020 12:22 pm PDT by
The new 3A283 firmware that Apple released for the AirPods Pro today appears to introduce support for Spatial Audio, a new feature coming to the higher-end AirPods with iOS 14. Multiple reports on Twitter and the MacRumors forums indicate that the firmware update adds a "Spatial Audio" option to the Control Center, which can be activated to enable the feature. Note that using Spatial Audio...

Apple Releases Safari 14 for Mac Ahead of macOS Big Sur Launch

Wednesday September 16, 2020 1:40 pm PDT by
macOS Big Sur didn't launch alongside iOS 14, iPadOS 14, tvOS 14, and watchOS 7 today, with the update coming later this fall, but Apple did release the Safari 14 update for macOS Catalina and macOS Mojave users. Safari 14 brings improved performance, customizable start pages, a Privacy Report to see which cross-site trackers are being blocked, and a new tab bar design that provides tab...

Full Transcript of Apple's 'Time Flies' Event With Apple Watch and iPad Updates

Tuesday September 15, 2020 8:46 am PDT by
Apple's virtual "Time Flies" event kicks off today at 10:00 a.m. Pacific Time, with Apple expected to debut new Apple Watch and iPad models, but it appears we may not see the iPhone 12 until next month. While we're not expecting to see new iPhones today, Apple's software updates for its various platforms are likely nearly ready for launch, so we may be hearing more about them today. Check...

Everything Apple Announced at Today's iPad and Apple Watch Event in Just Seven Minutes

Tuesday September 15, 2020 2:19 pm PDT by
Apple today held its annual September event, but this year was a bit different because no new iPhones were announced. The "Time Flies" event focused on the Apple Watch Series 6 and the iPad Air, and saw the debut of a new Apple One services bundle. Subscribe to the MacRumors YouTube channel for more videos. It took Apple an hour to introduce the new devices, but we've recapped the event in...