Apple Sued Over Listing Memoji as One of Its Registered Trademarks Despite Ongoing Legal Battle [Updated]

[MacRumors]

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.

Click here to read rest of article...

Article Link: Apple Sued Over Listing Memoji as One of Its Registered Trademarks Despite Ongoing Legal Battle [Updated]

 

[Elyzien]

Just buy the company Apple, be done.

 

[ugahairydawgs]

Based on the looks and reviews of the app it seems like suing in hopes of getting Apple to buy the company in an effort to make the problem go away is about the best business model they have.

 

[Khedron]

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

 

[QuarterSwede]

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

 

[bodonnell202]

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.

 

[iPhysicist]

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

 

[robjulo]

Oh....just wait and see.....some of the usuals will be on here doing just that very thing, as soon as their alert goes off.

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

 

[locovaca]

Apple's actions here appear to be indefensible.

Prepare to see some defense in this thread...

 

[coolsean20]

Hahahah their website. It’s hilarious

 

[mannyvel]

Memoji trademark:

5566242

IC 009. US 021 023 026 036 038. G & S: 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. FIRST USE: 20180628. FIRST USE IN COMMERCE: 20180628

Apple's use of Memoji is not the same as this trademark registration. I wonder if the inspector is going to allow Apple's registration. Is it too close? I think it's close, but Apple's legal might will prevail

 

[JosephAW]

At least they can claim "slowfie"

 

[urgs]

Memoji trademark:

5566242

IC 009. US 021 023 026 036 038. G & S: 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. FIRST USE: 20180628. FIRST USE IN COMMERCE: 20180628

This is not Apple's use of Memoji.

In addition to that, the registration of this trademark is prepared for cancellation:

MEMOJI Trademark of SOCIAL TECHNOLOGIES LLC - Registration Number 5566242 - Serial Number 86961925 :: Justia Trademarks

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...

trademarks.justia.com

It looks like, they were not very successful with their brand, so the last move is to sue Apple for anything...

 

[alpi123]

They're not clowns, they're the entire circus

 

[Iconoclysm]

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.

 

[ZMacintosh]

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

 

[theapplehead]

I wanna see how they talk their way out of this one ?

 

[insoft.uk]

It’s getting childish many came up the name years ago before Apple, just because of the technology now that makes such a thing really practical it’s becoming something that companies are trying to put their claim on, Nintendo with its Wii was by most the first big commercial use of personalised emojis that some nickname Memoji or Wiimoji they were many names coined and now with the iPhone there come back in a big way but Nintendo were one of the companies making it a thing until the Wii fizzled out.

 

[Carnegie]

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.

 

[mannyvel]

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.

If a lawsuit is necessary then the dispute is always more complicated than a press release can describe. After all, if it was straightforward then no lawsuit would be necessary.

What's amusing is that the press really just grabs anything and runs with it. Search for "Memoji trademark" and you can see this all over the tech press...even though the claims in the press release by the supposed owners are, well, questionable.

I mean jeez, it only takes like 30 minutes and a brain to look through the trademark filings. I guess the tech press must have plenty of the former and not enough of the latter.

 

[apolloa]

Hmm reading some of the comments then maybe Apple has this one IF they paid for the name from the original register for it.
But when they stole they clock design from that Swiss railway company, and public ally used the iPhone name before it owned it, I’m a bit dubious about Apple and it’s trademarks..

also how do I turn off dark mode in this website!! It’s turned off on my phone.

 

[I7guy]

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

You’re not a guilty until proven innocent person, or only applies to Apple?

 

[mannyvel]

You’re not a guilty until proven innocent person, or only applies to Apple?

Some people are from countries with different legal systems than the US. In many places the allegation of wrongdoing is enough, which isn't really a "legal system" per se.

Basically if someone is willing to accuse it's considered serious, because then they would lose status/whatever if their accusation is proved to be wrong. And yet if their accusation is proved wrong they're like "whatever, a mistake, so sorry." Crazy, right?

The higher the status of the accuser the more weight is given to the accusation. The legal system in the US, no matter how flawed it may be, is much better IMO.

 

[lkrupp]

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

That has not been determined yet. Don’t jump to conclusions before the facts are known. Anybody can make a claim. Proving it is another thing altogether.

 

[disaster.report]

I understand their stance in this... but like, c'mon. Look at the app itself on the Play Store. I don't know why they're suing Apple when their original Memoji app looks like actual trash.