Use Your Trademark From Day One: Social Technologies LLC v. Apple Inc.
When it comes to protecting trademarks, timing is everything. Social Technologies LLC v. Apple Inc., No. 20-15241 (9th Cir. 2021), highlights how critical it is for startups to use their trademark commercially as quickly as possible.
In this Ninth Circuit case, Social Technologies filed an intent-to-use trademark application in 2016 for the term MEMOJI, a term connected with their future mobile app. While the Social technologies team developed a business plan and sought investors, Apple announced its own software in 2018 under MEMOJI.
In late 2018, Apple petitioned to cancel Social Technologies’ registration. Social Technologies responded by filing an infringement lawsuit.
The Ninth Circuit found that Social Technologies had not engaged in bona fide use of their trademark in commerce, as required by the Lanham Act. As a result, Apple could request the cancellation of the original intent-to-use trademark.
The Lanham Act, 15 U.S.C. §§ 1051, defines the term “use in commerce” as:
“…the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
At the same time, one can abandon a mark. The most important criterion for abandonment is non-use for an extended time period.
Businesses can learn from the reasons Social Technologies lost this case. These included:
- Developing and releasing its app after Apple used the competing mark
- Using the trademark only for business and investment
- Communicating in ways implying that monetary gain was its primary motivation in bringing suit
These factors led the Ninth Circuit to conclude that Social Technologies’ use of the term MEMOJI was not in good faith.
The case is Social Technologies LLC v. Apple Inc., No. 20-15241 (9th Cir. 2021)
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