In July 2021, the Ninth Circuit of Appeals issued its opinion in Social Technologies LLC v. Apple. In that case, Social Tech sued Apple for infringing upon its registered trademark for the word “Memoji.” In defense, Apple argued that Social Tech's mark should be canceled because Social Tech failed to use the mark in commerce sufficiently.

Under the Lanham Act, someone is entitled to a registered trademark if they have a “bona fide intent” to use the mark in commerce to identify goods as coming from a specific source (i.e., the registrant). Both the use and intent prongs were relevant in this case.

Ultimately, the appellate court agreed with Apple. And along the way, the court offered important guidance on how companies can best protect their intellectual property (IP).

INTERNAL AND PROMOTIONAL EFFORTS WON'T SUFFICE; “USE” REQUIRES MORE THAN THAT

According to the Ninth Circuit, internal development, promotional tasks, and non-sales efforts on their own are insufficient to prove use in commerce. Instead, a company should demonstrate how the mark's use connects to the goods' commercial viability. To do so, the court will look at things such as:

• Business plans
• Product development and quality
• Timing of product's release
• Consumers' awareness of the mark
• Product sales and use

A REGISTRATION MUST BE MADE IN BONA FIDE—IN “GOOD FAITH”

In Social Tech, emails such as: “We are lining up all of our information, in preparation for a nice lawsuit against Apple, Inc! …. Get your Lamborghini picked out!” made it clear that Social Tech's efforts were in bad faith. Its goal was never to deliver a product. Instead, its goal was for Apple to open up its wallet. With such evidence, even actual sales and downloads of Social Tech's app couldn't save Social Tech's registration.

COURTS WON'T PROTECT TROLLS: THEY WANT TO PROTECT GENUINE INTERESTS

With other Supreme Court recent cases, Social Technologies is yet another example of how courts are increasingly intolerant of “intellectual property trolls”—those who obtain patent or trademark protection not to protect their own work but to exact ransom from others.

While the fight against trolls is not over, these cases put them on notice and help legitimate IP owners protect themselves.

If you have concerns about how to best protect your intellectual property, the Mykyta Law firm can help. For a free consultation, complete the website contact form or call us at (646)884-3319.