4 F.4th 811
9th Cir.2021Background
- Social Technologies (Social Tech) filed an intent-to-use application for the trademark MEMOJI in April 2016 and received a Notice of Allowance in January 2018; it sought an extension in March 2018.
- Lucky Bunny (LB) had earlier released a Memoji app (2014) and filed use-based trademark applications; Apple acquired LB’s rights in May 2018 and announced its Memoji feature at WWDC on June 4, 2018.
- Before June 4, 2018, Social Tech’s activities were promotional only (website, investor deck, unsuccessful investor solicitations, one internal $100,000 investment); no product code or sales existed pre-announcement.
- After Apple’s announcement, Social Tech rushed development, released an Android Memoji app on June 28, 2018, filed a Statement of Use June 30, 2018, and obtained Registration No. 5,566,242 on September 18, 2018; the app had bugs, ~5,000 downloads in 2018, and was later removed by Google.
- Internal emails from Social Tech’s founder during June–July 2018 refer to using releases and updates to support a lawsuit and to obtain payment; Apple filed for cancellation and the district court granted summary judgment canceling Social Tech’s registration; the Ninth Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Social Tech engaged in bona fide use in commerce to support its trademark registration | Pre-launch promotional work plus post-release downloads and a rushed app reflect genuine commercial use under the totality-of-the-circumstances test | Pre-release activities were not sufficiently public; post-announcement development and emails show token use intended to reserve rights and create litigation leverage | No bona fide use; registration invalid and summary judgment for Apple affirmed |
| Whether non-sales activities can suffice to establish use in commerce | Non-sales activities, solicitations, and limited downloads can combine to show use under Chance/Rearden totality analysis | Non-sales conduct counts only if sufficiently public and commercially genuine; token or litigation-driven acts do not satisfy the Lanham Act | Non-sales activities may count, but here they were insufficient given lack of public association and documentary evidence of litigation motive |
Key Cases Cited
- Chance v. Pac-Tel Teletrac, Inc., 242 F.3d 1151 (9th Cir. 2001) (sets totality-of-the-circumstances test for use in commerce and rejects token use)
- Brookfield Commc'ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036 (9th Cir. 1999) (use must be sufficiently public to create an association between mark and source)
- Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190 (9th Cir. 2012) (non-sales activities may support use but external manifestation to outsiders is required)
- New West Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194 (9th Cir. 1979) (prominent public display can establish use in commerce)
- La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265 (2d Cir. 1974) (sales made primarily to establish trademark rights are not bona fide)