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

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.

The full complaint, sent to us by law firm Pierce Bainbridge Beck Price & Hecht LLP, is embedded below. Continue reading "Apple Sued Over Listing Memoji as One of Its Registered Trademarks Despite Ongoing Legal Battle"

What Will macOS 10.15 Be Called: Mammoth, Monterey, Rincon, Skyline, or Something Else?

Following Apple's shift to California-themed names for its Mac operating systems with OS X Mavericks back in 2013, Apple appeared to take steps to protect a number of other California-related names by filing for trademarks under a series of shell companies intended to mask the true identity of the applicant.


All told, we identified 19 trademarks that were applied for under six different companies that all appeared to be Apple shell companies. Several of these names, including Yosemite, Sierra, and Mojave, have been used by Apple, while others have yet to be put to use.

Over the years, the trademark review process has played out for all of these applications, with most being subject to some form of back-and-forth between the applicants and examiners involving various approvals, denials, and suspensions. Even for approvals, however, owners are required to submit proof of the trademarks being used in commerce. This Statement of Use can be submitted up to 36 months after trademark approval, as long as the applicant regularly requests successive 6-month extensions to the original 6-month submission period.

With over five years having passed since the trademarks were applied for, many have now been abandoned, either at some point during the review process or through failure to provide proof of commercial use following approval. In fact, of the original 19 names that were included in the trademark applications, all but four of them have been either used by Apple or abandoned, with the remaining live applications being Mammoth, Monterey, Rincon, and Skyline.

Perhaps the most interesting one is Mammoth, which is likely related to Mammoth Lakes and Mammoth Mountain, a popular area for skiing and hiking in the Sierra Nevada mountains.

Notably, the trademark application for Mammoth was just approved earlier this month after many years of delays and a suspension. It's seen quite a bit of activity over the past six months, with the applicant Yosemite Research LLC having made some changes to reactivate the suspended application and shifting the attorney of record on the application to be noted trademark attorney Glenn Gundersen, who has worked with Apple on a number of intellectual property issues in the past.


The U.S. Patent and Trademark Office granted the registration for Mammoth and published it for opposition in March. After receiving no opposition to the trademark registration, the Mammoth trademark was officially allowed earlier this month on May 7. It's certainly possible that the timing is a coincidence, especially since the activity appears to have been driven by deadlines set by the Patent and Trademark Office in its communications regarding the suspended application, but the fact that the trademark was approved just weeks ago after years of relative inaction certainly caught our attention.

Monterey, a historic city and popular vacation spot on the Pacific coast, has been one of the popular macOS name options among our readers, so many will be happy to hear that this one remains a possibility. The trademark was applied for by Asilomar Enterprises LLC in December 2013, but wasn't allowed until June 12, 2018. One extension to the Statement of Use requirement has been granted, and Asilomar will have until June 2021 to prove commercial use of the name, provided additional extensions are requested.

Rincon is a popular surfing area in Southern California, and a trademark on that term was applied for by Landmark Associates LLC. The trademark was allowed on August 2, 2016, and Landmark has applied for successive extensions for the Statement of Use, with the fifth and final extension having been granted in January of this year. As a result, Landmark has until August of this year to prove the Rincon name is actively being used, or else the trademark will be lost.

Finally, Skyline likely relates to the scenic Skyline Boulevard that largely follows the ridge of the Santa Cruz Mountains running south from San Francisco, and Antalos Apps LLC filed for a trademark on the name in December 2013. The trademark was allowed on March 20, 2018, and the second Statement of Use extension was granted on February 28 of this year. The owner will have until March 2021 to prove use of Skyline in commerce, provided all necessary extensions are requested.

So what will macOS 10.15 be called? Will it be one of these four, or something completely different? Apple has drawn from the original list of trademark applications the majority of the time over the past five releases, but has selected something new a couple of times. One of Apple's presumed shell companies applied for a trademark on the name El Cap, but Apple opted to go with the famous mountain's full name of El Capitan for OS X 10.11, while 2017's macOS 10.13 High Sierra was positioned as a refinement of the previous year's macOS Sierra.

Related Roundup: macOS 10.15

This article, "What Will macOS 10.15 Be Called: Mammoth, Monterey, Rincon, Skyline, or Something Else?" first appeared on MacRumors.com

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Apple Believes This German Cycling Path Logo Infringes on Its Own Logo

Apple recently objected to the logo of a new German cycling path in an appeal filed with the German Patent and Trademark Office, according to German outlets General-Anzeiger Bonn and Westdeutscher Rundfunk.


Apple reportedly takes issue with the logo's green leaf and supposed "bitten" right side, attributes the company believes are too similar to its own logo.

The logo, registered with the German Patent and Trademark Office in 2018, was designed for a new cycling path named Apfelroute that is set to open in the Rhine-Voreifel region of Germany on May 19. Rhine-Voreifel Tourism has already used the logo on uniforms, bike racks, cycling maps, banners, signposts, and more.

In addition to the appeal, lawyers representing Apple have reportedly sent letters to Rhine-Voreifel Tourism ordering them to stop using the logo, but the tourism agency believes it would be very expensive to do so.

"With the Apfelroute we have a completely different product and it is unbelievable that such a large company is attacking us," said one company official.

While it may sound unfair that a company as large as Apple is going after a small German tourist agency's cycling path logo, keep in mind that companies have an obligation to police and enforce their trademarks, as failure to do so could be viewed as abandonment, possibly resulting in the loss of trademark rights.

Likewise, Apple recently objected to the apple logo trademark that a Norwegian political party registered last year.

German reports suggest that Rhine-Voreifel Tourism narrowing the scope of the Apfelroute trademark will likely be enough for Apple to withdraw its opposition. If not, there is also the chance of an out-of-court settlement.


This article, "Apple Believes This German Cycling Path Logo Infringes on Its Own Logo" first appeared on MacRumors.com

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Apple Extends iPod Touch Trademark to Include Gaming Devices

The U.S. Patent and Trademark Office earlier this month approved for publication a trademark application from Apple for the term "iPod touch" that would extend protection to cover "Hand-held units for playing electronic games; Handheld game consoles" under International Class 28 (games, toys, and sporting goods).

Apple has held a trademark for the iPod touch name since 2008 under International Class 9 (audiovisual and information technology equipment) with the following description:
Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files; computer software for use in organizing, transmitting, manipulating, and reviewing text, data, audio and video files on portable and handheld digital electronic devices.


As part of its justification for the new trademark application under gaming consoles, Apple submitted a screenshot of its iPod touch overview page scrolled to the "Gaming" section, with red arrows calling out the product name and the "Buy" button.

The iPod touch has of course been a handheld gaming console since its launch over a decade ago, so it's unclear why Apple has waited until now to extend its trademark coverage to include the area. It could be a purely defensive move to protect against competitors or other challenges, but given rumors last week of Apple working on a seventh-generation iPod touch some three and half years after the last update, there's naturally some speculation that there could be more to this.

We haven't heard any specific rumors about what to expect in a seventh-generation iPod touch, but we expect Apple to keep spec upgrades fairly minimal in order to maintain a low price point to appeal to customers who can't or don't want to step up to an iPhone.

Apple's new application will be published for opposition on February 19, and unless viable third-party opposition to Apple's claim appears, the company will be granted the trademark later this year.

Related Roundup: iPod touch
Buyer's Guide: iPod Touch (Caution)

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Apple Files New Trademark Application for Classic ‘Rainbow’ Logo

Apple has applied for a new U.S. trademark for its famous multicolor logo for use on apparel, reports The Blast. The Apple filing was processed in December by the U.S. Patent and Trademark Office's Trademark Reporting and Monitoring System (TRAM), and is now being considered for approval.

The description of the mark in the filing is of "an apple with a bite removed, with a detached leaf in green, and the apple divided into horizontal colored segments of the following colors (from top to bottom): green, yellow, orange, red, violet and blue".

According to the application, the logo will be used for headgear, namely, hats and caps. Apple already sells t-shirts with the same logo emblazoned on the front at its Apple Park Visitor Center, so the filing likely relates to a possible extension of the existing clothing line, although there's no saying whether Apple will actually use the trademark or just wants to protect it against unofficial use.

The classic multi-colored Apple logo was conceived by graphic designer Rob Janoff in 1977, but Steve Jobs axed the design when he returned to Apple in 1997 in favor of the monochromatic logo that continues to be used today.

Janoff's "rainbow Apple" was actually created as a more modern, albeit playful replacement for Apple's first logo, which was designed in 1976 by Apple co-founder Ron Wayne. Sometimes referred to as Apple's "fifth Beatle", Wayne famously sold his stake in the company two weeks after it was founded.

Wayne was a fan of the ornate line-drawing style of Victorian illustrated fiction, and used Sir Isaac Newton as the company’s symbolic bellwether, an apple hanging precariously above his head. A quote from Wordsworth embellishes the baroque frame: "A mind forever voyaging through strange seas of thought, alone."


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Apple Sued for App Store Logo’s Resemblance to Chinese Clothing Brand Logo

When Apple released the updated App Store as part of iOS 11, the App Store logo got an overhaul. Instead of an "A" made from a pencil, a paintbrush, and a ruler, Apple designed a simpler "A" that looks like it's constructed from popsicle sticks.

As it turns out, Apple's App Store logo bears a resemblance to the logo used by a Chinese clothing brand named KON, and now KON is suing Apple.


According to Phone Radar (via The Verge), KON believes Apple's new logo is a violation of Chinese copyright law. KON is a brand that's been around since 2009, and as The Verge discovered, Baidu Baike, the Chinese equivalent of Wikipedia, says the KON brand was inspired by music like the Sex Pistols, with the logo meant to represent three skeleton bones symbolizing power over death.


KON wants Apple to publicly apologize for using its logo, stop selling devices using the current App Store logo, and pay compensation for economic loss.

The Beijing People's Court has accepted the case and should make a ruling over the course of the next couple of weeks.

Apple in 2016 lost a similar case involving the "IPHONE" trademark that was in use by Chinese leather goods manufacturer Xintong Tiandi Technology. In that case, Apple was aiming to protect its iPhone trademark to prevent Xintong Tiandi from using the iPhone name for its cases, but the Chinese courts ruled against Apple.


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