A complaint filed with the US District Court for the Northern District of California claims Apple's Memoji sign, which is used to describe a marquee's iPhone X and XS function, infringes a similar trademark – "MEMOJI "- currently in use by Android app maker Social Tech.
According to the lawsuit, Social Tech submitted an intent-to-use application for the MEMOJI brand in April 2016, but before registration was obtained, Apple made a game for the version of the name.
According to the creator of the app, Apple has established a subsidiary called Memofun Apps LLC to "forget and abandon an app" with the name "Memoji." Together with goodwill, Apple looked for older rights to a then suspended "Memoji" trademark application from owners Big 3 ENT and Lucky Bunny. A deal was apparently achieved because Memofun granted rights to Memoji to Apple on 4 June 2018, the same day that Memoji for iOS was introduced at the Worldwide Developers Conference.
Further, Social Tech said an unknown person inquired about buying the rights to MEMOJI in May, just two weeks prior to Apple's Memoji debut. The person who refused to identify the company for which he was working was informed that the name MEMOJI was not for sale. Social Tech believes that the unknown man was an Apple representative.
On 30 June, Social Tech submitted a statement of use to the U.S. Patent and Trademark Office. The agency then registered the mark on 18 September with a "first use" and used "in commerce" on 28 June, the day the app was made available in the Google Play Store.
In the complaint, Social Tech says that Apple's Memoji has the fully implemented & # 39; make efforts to associate the brand with the app maker's brand. In addition to name recognition, the Memoji debut for iOS in June forced Social Tech, according to the company, and asked the developer to release a "simple but functional" version of MEMOJI that was not fully baked. A more complete iteration would have become a market if Social Tech was able to stick to the planned release schedule, the filing claims.
"Apple's offending product since the announcement has caused Social Tech to lose control of its brand: Google search and YouTube search for MEMOJI is dominated by Appredits Infringing Memoji," the complaint s.
Counsel for Social Tech in early June informed Apple that the MEMOJI app would soon be launched on Google Play and that registration for MEMOJI would be requested from the USPTO. In response, Apple said it could cancel the registration because its "common law rights" date from Social Tech in April 2016. Social Tech refutes these claims.
To aggravate the situation is the relative similarity between the two products being marketed under & # 39; Memoji & # 39; and & # 39; MEMOJI & # 39 ;, argues Social Tech. For exle both apply to message functions offered to users of mobile platforms.
However, apart from their message functions, the two products are very different.
Widely known as a highlight iOS 12 feature, Apple's Memoji creates three-dimensional avatars that can animate users with facial expressions captured by the TrueDepth camera system of the iPhone. Social Tech version, on the other hand, allows users to edit video & # 39; s and photos and send the results as messages.
Social Tech seeks preliminary and permanent orders that limit Apple's use of the Memoji trademark, damages, gains due to Apple's unauthorized use of the name and confirmation of rights to the trademark.
Ironically – and perhaps typical of Google's wild and fuzzy store – there are already several copycats in the Google Play Store that take advantage of Apple's "Memoji" hype. Dozens of apps take & # 39; Memoji & # 39; in metadata of search terms, while at least seven include the term directly in their name. Whether Social Tech also demands compensation from publishers of those Android apps is unknown.