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

[falainber]

How does your opinion of the looks of the iPhone relate to the thread topic?

It's simple. It was a reply to the post that said: "I don't know why they're suing Apple when their original Memoji app looks like actual trash.". As if the look of the app disqualified the company from applying for a trademark which is obviously a ridiculous statement. The reply just explained why it was ridiculous by using iPhone 11 as an example (which many people do find to be ugly). Silly fanboism was countered, that's all.

Yup. 2 stars.

Unfortunately for Apple, it's not the case. And why is it that Apple constantly have problems with names/trademarks? Can't they come up with their own names? Even their most important names "Apple" and 'iPhone" were borrowed from other companies (and litigated).

 

[Carnegie]

I read it in #65 and #86. It seems social tech acquired another mark that pre dated lucky bunny... or am I reading that wrong? https://www.courtlistener.com/docket/8028244/social-technologies-llc-v-apple-inc/

Thank you.

Yes, it looks like Social Technologies negotiated a settlement earlier this year with Christopher Anthony in which he assigned some rights to Social Technologies. But that was likely a defensive move on Social Technologies' part. It was probably trying to protect its own trademark, and the registration thereof, rather than looking for ammunition - i.e. an earlier priority - to use against Apple.

Mr. Anthony filed to intervene in the case, claiming that he had used a Memoji trademark in 2014. Social Technologies opposed that intervention arguing that Mr. Anthony didn't have relevant trademark rights because, among other reasons, he hadn't continuously used the trademark. Social Technologies argued that Mr. Anthony's supposed use of the trademark didn't have priority. Apple also argued that Mr. Anthony's use of the trademark wasn't continuous, but didn't oppose his intervention in the case.

Mr. Anthony's motion to intervene was denied. Social Technologies, apparently, subsequently negotiated a settlement with Mr. Anthony.

So I wouldn't expect Social Technologies to argue earlier priority based on Mr. Anthony's use of the trademark and its own acquisition of rights relating to that use. Such an argument wouldn't be credible. If anything, the existence of Mr. Anthony's earlier use of the term hurts Social Technologies interests. If Mr. Anthony legitimately had priority based on earlier and continuous use of the trademark, that calls into question the validity of Social Technologies' federal registration of the trademark. That registration occurred before Social Technologies acquired rights from Mr. Anthony and wasn't based on Mr. Anthony's use. At the same time, Mr. Anthony doesn't have his own federal registration of the trademark which Social Technologies could now claim rights to.

 

[Kabeyun]

If a federal law is broken why is it a civil suit?

because false copyright registration is a tort and the remedy is a civil penalty, not jail time.

*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

Thanks for that. So Apple’s apparently alleging that Social’s copyright was invalid due to prior art, or some such. Doesn’t (yet) give Apple the right to claim the mark as their own though. There’s obviously a lot more to this story. Interesting to see how it unfolds.

 

[I7guy]

It's simple. It was a reply to the post that said: "I don't know why they're suing Apple when their original Memoji app looks like actual trash.". As if the look of the app disqualified the company from applying for a trademark which is obviously a ridiculous statement. The reply just explained why it was ridiculous by using iPhone 11 as an example (which many people do find to be ugly). Silly fanboism was countered, that's all.

Unfortunately for Apple, it's not the case. And why is it that Apple constantly have problems with names/trademarks? Can't they come up with their own names? Even their most important names "Apple" and 'iPhone" were borrowed from other companies (and litigated).

Yeah, beauty is always in the eye of the beholder lately. Silly fanboism, silly unfounded criticism, the wheel keeps revolving.

AirPods, HomePod. Are you saying Apple is the only company to ever gave litigation over a trademarked name?

 

[definitive]

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

Apple fanboy: Hold my beer!

 

[SPUY767]

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

“IP theft”
Apple didn’t really steal anything. It doesn’t appear that the company actually makes anything beyond claiming ownership of the idea of an emoji that looks like your face. That said, to claim ownership is stupid, and probably down more to the marketing department and the web dev team than anything else.

 

[mannyvel]

And why is it that Apple constantly have problems with names/trademarks? Can't they come up with their own names? Even their most important names "Apple" and 'iPhone" were borrowed from other companies (and litigated).

Everyone has problems with trademarks and names. You have obviously never owned or run a company, product, or been in marketing. Squatters have grabbed every domain name in the dictionary. There are trademarks for practically every word in existence. That's why all the names today make no sense: you have to make up words just to get out of the gate or pay someone hard cash for the name you want.

 

[Iconoclysm]

because false copyright registration is a tort and the remedy is a civil penalty, not jail time

Ok, so if we want to go there - and let's not forget the original post and its ridiculousness - this would be a trademark registration infringement, not copyright. It also wouldn't be a broken law if it hasn't even gone to trial.

 

[ZMacintosh]

because false copyright registration is a tort and the remedy is a civil penalty, not jail time.

Thanks for that. So Apple’s apparently alleging that Social’s copyright was invalid due to prior art, or some such. Doesn’t (yet) give Apple the right to claim the mark as their own though. There’s obviously a lot more to this story. Interesting to see how it unfolds.

Well, (and not being a trademark expert but am interested in the process as I've been part of a few) but it appears Apple's first registration of Memoji used specimens from the Lucky Bunny's use of Memoji and Lucky Bunnys was technically the first filing of the word/mark of Memoji. I believe that was Apple's intent, to buy the rights to the trademark or have them abandon them but LuckyBunny only filed an intent to use and never followed up with the trademark office (unless they purposely abandoned the filing). so its considered Dead and a few months after SocialTech filed theirs...so there's actually registered and that gains priority over dead marks.

if apple can prove otherwise their intentions and use were before SocialTechs they could definitely win the case especially if there is no market use of social techs Memoji product or it does infringe. It does cost a pretty penny to file a USPTO action case (which apple has no shortage of) its really up to the trademark office at this point.

 

[gaximus]

if someone stole your car and drove it around but did no “damage” would it be ok? Theft is theft.

If someone stole my car and drove it around, it would use gas. I'm not saying it wrong, I'm asking what is the monetary value, did the other company loose money because Apple used the trade mark?

 

[Carnegie]

Apple is no longer using the enclosed R in connection with the Memoji trademark in that list. It's now using TM. So perhaps someone had just made a mistake before and now that Apple has been made aware it has corrected the issue.

If that's the case, then Apple likely won't face consequences as a result of the mistake. It isn't fraud if Apple just made a mistake and didn't intend to misled.

 

[Kabeyun]

Ok, so if we want to go there - and let's not forget the original post and its ridiculousness - this would be a trademark registration infringement, not copyright.

Fine, whatevs. “Trademark,” not “copyright.” My point to the op was that this is a civil matter, not a criminal one.

It also wouldn't be a broken law if it hasn't even gone to trial.

Not sure what your point is here. Technically no law/rule is ever broken before there’s a verdict or settlement. Before that it’s an allegation. Not really the topic.

 

[falainber]

Everyone has problems with trademarks and names. You have obviously never owned or run a company, product, or been in marketing. Squatters have grabbed every domain name in the dictionary. There are trademarks for practically every word in existence. That's why all the names today make no sense: you have to make up words just to get out of the gate or pay someone hard cash for the name you want.

I would not call Beatles or Cisco "squatters". Even this small company has a real product.

 

[rjohnstone]

If Mr. Anthony legitimately had priority based on earlier and continuous use of the trademark, that calls into question the validity of Social Technologies' federal registration of the trademark. That registration occurred before Social Technologies acquired rights from Mr. Anthony and wasn't based on Mr. Anthony's use. At the same time, Mr. Anthony doesn't have his own federal registration of the trademark which Social Technologies could now claim rights to.

Reading through the complaint, the Memoji mark was not in continuous use after Nov 2014. (based on the 9th Circuit Court's definition). So between Nov 2014 and April 2016, the mark was essentially dead.

Social Tech's argument is that an abandoned app in the AppStore is not continuous use. The Court hasn't ruled on the validity of that yet.

There is also the issue of the transfer from Lucky Bunny to Apple in 2018.
From Page 17:

U.S.C. § 1060. The Ninth Circuit has noted “[t]he purpose behind requiring that goodwill accompany the assigned mark is to maintain the continuity of the product or service symbolized by the mark and thereby avoid deceiving or confusing consumers.” E. & J. Gallo Winery, 967 F.2d at 1289.

Here, Lucky Bunny abandoned the mobile app with which its mark was associated in 2014, leaving its assignment to Apple in 2018 devoid of any goodwill. Indeed, Apple appears to have taken no steps to transfer any goodwill or other intangible or tangible assets from Lucky Bunny.

If the below is true, Apple could sue Lucky Bunny for selling something that they knew they no longer owned. Remember, Lucky Bunny sold the rights to Apple in mid 2018, after failing to oppose Social Tech's registration in Dec 2017.

Only after Social Tech filed its intent-to-use application in April 2016 did Lucky Bunny file, in April 2017, a second application for the Memoji trademark. (Dee Decl. ¶¶ 2, 8.) This second Lucky Bunny application was deemed “suspended” by the PTO examiner in June 2017, explicitly based on Social Tech’s prior pending intent-to-use application and the likelihood of confusion that would be caused by Lucky Bunny’s use of the mark. (Dee Decl. ¶ 9, Ex. 8.) Even after receiving express notice of Social Tech’s pending application in June 2017, Lucky Bunny took no action to oppose Social Tech’s application during the opposition period starting on December 5, 2017 (or otherwise).

It's not as cut an dry as some here seem to think.
I'd be curious about the outcome of the "continuous use" ruling regarding abandoned apps in an online app store.
Is it abandoned if it never gets updated and is no longer advertised?

 

[SPUY767]

If someone stole my car and drove it around, it would use gas. I'm not saying it wrong, I'm asking what is the monetary value, did the other company loose money because Apple used the trade mark?

They should be paying Apple because now they’ve gotten more press than they would have ever gotten of their own accord. /sarcasm

 

[JGrantATl]

Appeal is in against apple