Memoji has been around for quite some time already, but despite the fact that Apple has tried to nail down the trademark registration in the United States, that hasn’t panned out for the company.
As reported today by MacRumors, Apple has applied for two trademarks related to the Memoji feature with the United States Patent and Trademark Office (USPTO). However, both of those are currently suspended due to ongoing litigation with Social Technologies LLC.
And now that company has filed another lawsuit against Apple, this time saying that Apple has knowingly categorized “Memoji” as one of its own registered trademarks in the U.S., despite not officially earning it.
Since June of this year, Apple has listed “MEMOJI®” on its official trademark list. That ® symbol identifies something as having a federal registration for the trademark. However, that specific trademark is registered to Social Technologies LLC and not Apple.
The original report does note that the ® logo does also signify a registered trademark in some other countries outside of the United States, where Apple has successfully registered a trademark for Memoji. However, Apple explicitly states that this registered trademark is found within the United States, which Social Technologies LLC takes umbrage with.
Here is an excerpt from the lawsuit, which was filed in federal court in the state of 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 has already filed a lawsuit against Apple in the past, filing a lawsuit infringement case back in late 2018. The company has even alleged in the past that Apple unsuccessfully tried to outright purchase the rights to the “intent-to-use” application in April of 2016.
Social Technologies LLC does have an app that actually uses the word “Memoji”. It’s a messaging app that’s described 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”. It’s available right now for Android devices only.
Right now, with this latest lawsuit against Apple, Social Technologies LLC is aiming to get an injunction placed against Apple that would prevent the company from using the ® logo connected with Memoji. The company is also looking to get awarded legal fees and an unknown amount for damages. Social Technologies LLC would also like a declaration that it is the only company that owns a federally registered trademark for Memoji.
You can check out the full complaint filed by Social Technologies LLC through the source link above.
This actually not the first time that Apple has tackled something like this, as far as legal matters are concerned. In October of 2017, a company called Emonster, based out of Tokyo, Japan, sued Apple over the trademark of “Animoji”. At the time, it sounds like Apple tried yet again to handle the situation with money, but, like this latest effort, was unsuccessful in that attempt:
Indeed, Apple offered to buy plaintiffs’ mark but was rebuffed. Instead of using the creativity on which Apple developed its worldwide reputation, Apple simply plucked the name from a developer on its own App Store.
Apple could have changed its desired name prior to its announcement when it realized Plaintiffs already used ANIMOJI for their own product. Yet Apple made the conscious decision to try to pilfer the name for itself—regardless of the consequences.
Sounds like Apple was dead-set on using Animoji and Memoji, and nothing else mattered. So perhaps it makes sense a bit more why Apple is working so quickly to nail down the registered trademark for “slofie”.