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The ‘Memoji’ Effect

Social Technologies LLC which is based in Atlanta, U.S has initiated a lawsuit claiming an injunction to prohibit Apple Inc. from using the ® against its Trademark for ‘Memoji’. The Atlanta based company is also seeking monetary damages from Apple in addition to the legal fees. Social Technologies LLC contends that the using of ® symbol falsely indicates that Apple Inc. holds the federal registration for the trademark ‘Memoji’ in the United States.

Apple Inc. has included MEMOJI® in its trademark list. On October 1, 2019, Apple Inc. replaced MEMOJI® with Memoji™ in its trademark list. The same can be accessed here. However, the fact of the matter is that the federal registration for the trademark belongs to Social Technologies who offers an Android App named Memoji on the Google Play Store. The complainant had already sued Apple Inc. for infringement of its trademark back in September 2018 and has also alleged that Apple Inc. had also tried to purchase the rights over ‘Memoji’ in April 2016 but was unsuccessful.

Apple Inc. in the Worldwide Developers Conference (WWDC), 2018 had introduced Memoji as the name of Apple’s personalized emoji feature. In furtherance of the same, Apple Inc. applied for the trademark for this feature with the U.S Patent and Trademark Office, but both of them are currently suspended due to the ongoing litigation with Social Technologies LLC. The copy of the Complaint filed by Social Technologies LLC against Apple Inc. can be accessed here.

An extract from the lawsuit reads:

“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.”

The Chinese Electronics Company, Xiaomi Corporation too had got into a controversy after they introduced ‘Mimoji’ which is said to resemble Apple’s Memoji design. Apple Inc. also owns the ‘MEMOJI’ Trademark in Hong kong (See Image Below). However, with the U.S Patent and Trademark Office suspending Apple’s Emoji Trademark Application, the tech-giant may have to begin thinking of another name for their Emoji. The end result, of course, is that Xiaomi will never be able to use the ‘Mimoji’ in the U.S Market as well!

We shall keep you posted on the developments.

Featured Image Courtesy: https://www.trustedreviews.com/news/iphone-x-animoji-3335178

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Nikhil Naren

An ardent lover of Intellectual Property and Information Technology Laws.

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