Malcolm Owen
In a filing at the U.S. District Court for the Southern District of New York submitted on Monday, Social Technologies, claims Apple is improperly and fraudulently identifying Memoji as a registered trademark, despite not owning the mark in the United States. Specifically, the firm alleges Apple has falsely marked Memoji by including the term in the Apple Trademark List on its website, which is claimed to be an attempt to "defraud the general public to Social Tech's detriment."
Social tech is the creator of an Android app called Memoji.
In short, the complaint is that Apple is using the encircled R symbol denoting a registered mark in relation to Memoji on that website, rather than the TM or SM symbol which denotes a trademark or service mark that has not necessarily been granted a registration from the US Patent and Trademark Office.
The filing highlights Apple's awareness of the differences within the trademark list page's text, which instructs for the use of the listed terms using the "appropriate" symbol "on first use" in publications distributed only within the United States, or otherwise to include an appropriate trademark attribution notice.
Complicating matters further is the inclusion of the mark on the list, in connection to an earlier lawsuit from 2018 filed by Social Tech in the Northern District of California over the matter.
According to the complaint, Social Tech checked the trademark list page on June 17, a day before Apple Senior Director of Copyright and Trademark Thomas La Perle was scheduled to give a deposition in connection to the California lawsuit, and saw Memoji was not included on the list.
Immediately after the deposition, Social Tech alleges the list was updated to include the supposed false designation for Memoji. Social Tech claims La Perle "orchestrated a scheme to undermine Social Tech's registered trademark rights" with the move.
The filing goes on to highlight a federal court finding that "The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is ground for denying the registration of an otherwise registrable mark."
The "extensive advertising" of Memoji is also raised, with it being used not only to promote iPhones and iPads, but also in its use "as a mascot for its entire brand," such as to promote Apple Music and even to replace the executive headshots ahead of the feature's availability to the public in iOS.
Social Tech's complaint has four listings for "cause of action," including the false designation of a trademark as federally registered, the dilution of the Memoji trademark, unfair competition, and a violation of New York General Business Law.
In its prayer for relied, Social Tech asks for a prohibition of Apple and it's agents from using the registration symbol in connection with Memoji, a ban of using the infringing mark or "any colorable imitation or confusingly similar variation," monetary damages, pre- and post-judgment interest, costs and expenses, attorney's fees, and the declaration that Social Tech owns the only federally registered Memoji trademark.
Social Technologies Versus Apple - New York by Mike Wuerthele on Scribd
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12 Comments
Another day, another lawsuit. This too will pass into obscurity. And some wonder why corporations need a legal department.
It's a difficult case to win, not because it's a trademark fight, but because it's based on a scenario that has far simpler explanations.
"Mymoji"?
No, I didn't look it up.
Apple's listing on the Trademark List appears to be something of a fuck you to these folks. Memoji as listed there now is all-caps MEMOJI® (unlike every other mark listed) and if you look at the original lawsuit, you'll find the Android app was using MEMOJI while Apple was using Memoji. This is also in contrast to how Apple actually uses it, as Memoji.
Basically Social Tech filed an intent to use MEMOJI [Pseudo mark: ME MOJI] in April 2016 and then, more than two years later, was still not ready to go when Apple launched Memoji. They then scrambled to put something out so they could capitalize on having filed the intent to use and maintained it over those two years.
Also, the trademark application that Apple did buy was for MEmoji ... [Pseudo mark: ME EMOJI] -- filed April 2017.
So they are different.
Maybe when Apple's lawyer cites "common law" in its defense he is talking about the fact Social Technologies did not launch until after Apple did so. So they can't complain about getting swamped, and they have no right to recompense for that. Apple isn't required to sit around waiting to see if Social Tech will ever launch. They can argue about ME EMOJI versus ME MOJI, but that's all. And maybe that's a loser for Social Tech, because ME EMOJI is a stronger pseudo mark than ME MOJI -- WTF is a "MOJI" ? -- when Apple uses "Memoji."