In Brief:   An emoji trademark wasn’t used in commerce.

Here’s What Happened:   

An emoji is a graphic that’s used in electronic messages as a substitute for typed conversation. Mobile phones come with a default set of emojis. You can also purchase additional ones.

Social Technologies LLC had the brilliant idea of creating an app that allowed the user to create an emoji that looked like themselves. Social Technologies engaged in some pre-commercial activities like developing a business plan and looking for funding. In 2016, Social Technologies filed an intent to use application for the trademark “Memoji”. 

In 2018, Apple Corp. announced its own MEMOJI software which it acquired from a third party. At that time, Social Technologies had not yet written any code for its app and had engaged only in promotional activities for the planned software.

Social Technologies panicked and rushed to develop its MEMOJI app. Social Technologies’ co-founder and president sent several internal emails urging acceleration of the software development in preparation to file a trademark infringement lawsuit against Apple. The president wrote to the company’s developers that it was “[t]ime to get paid, gentlemen,” and to “[g]et your Lamborghini picked out!” Three weeks later Social Technologies launched a hugely buggy app that had to be pulled from the market. Social Technologies used the ill-fated version of the app to file a statement of use and Social Technologies obtained a registration. 

Apple filed a proceeding before the Trademark Trial & Appeal Board to cancel Social Technologies’ MEMOJI registration. Social Technologies filed suit against Apple for trademark infringement and seeking a declaratory judgment of non-infringement and validity of its MEMOJI registration. The district court granted Apple’s motion for summary judgment to cancel Social Technologies’ registration because it had not engaged in bona fide use of the MEMOJI trademark.

The Ninth Circuit Court of Appeals affirmed the judgment. Under the Lanham Act, a trademark has to be used in the ordinary course of business. So, activities that merely reserve a right don’t count. Promotional activities or internal sales are not use in commerce. But sometimes, continuous use of a mark as a business name, in public relations campaigns, in sales presentations and in media coverage together sufficiently establish bona fide use in commerce. Courts look for “external manifestation” and “sufficiently public use” to warrant trademark protection. The facts showed that Social Technologies rushed to market after Apple’s announcement. The buggy app was only token use and didn’t qualify as use in commerce.   

WHY YOU SHOULD KNOW THIS:  Priority of rights in a trademark belongs to the first one to use it. Social Technologies was felled by its token use of the app. Don’t bother rushing to market with something that clearly doesn’t work.

On another note, be careful about what you write in an email. Especially sensitive issues like rushing to develop an app so that you can sue a deep pocket reflect badly when they are disclosed in litigation.

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