Social Technologies LLC v. Apple Inc.

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

SOCIAL TECHNOLOGIES LLC, a No. 20-15241

Georgia limited liability company,

Plaintiff-Appellant, D.C. No.

3:18-cv-05945-

v. VC

APPLE INC., a California corporation,

Defendant-Appellee. OPINION

Appeal from the United States District Court

for the Northern District of California

Vince Chhabria, District Judge, Presiding

Argued and Submitted May 10, 2021

San Francisco, California

Filed July 13, 2021

Before: Michael D. Hawkins and Eric D. Miller, Circuit

Judges, and Jane A. Restani, * Judge.

Opinion by Judge Restani

*

The Honorable Jane A. Restani, Judge for the United States Court

of International Trade, sitting by designation.

2 SOCIAL TECHNOLOGIES V. APPLE

SUMMARY **

Lanham Act

Affirming the district court’s summary judgment in

favor of Apple Inc. in a trademark infringement action

brought by Social Technologies LLC over the use of the

MEMOJI mark, the panel held that there was no material

issue of fact as to whether Social Tech engaged in bona fide

use of the mark in commerce, such that its registration was

valid and the mark was entitled to protection under the

Lanham Act.

The panel held that mere adoption of a mark without

bona fide use in commerce, in an attempt to reserve rights

for the future, is insufficient to establish rights in the mark

under the Lanham Act. Use in commerce requires use of a

genuine character, in a way sufficiently public to identify or

distinguish the marked goods in an appropriate segment of

the public mind. Considering the totality of the

circumstances, including relevant non-sales activities, the

panel agreed with the district court that the evidence in the

record showed that Social Tech’s use of the MEMOJI mark

was not bona fide in commerce. Accordingly, Apple was

entitled to cancellation of Social Tech’s trademark

registration.

**

This summary constitutes no part of the opinion of the court. It

has been prepared by court staff for the convenience of the reader.

SOCIAL TECHNOLOGIES V. APPLE 3

COUNSEL

James Kelly (argued) and John M. Pierce, Pierce Bainbridge

P.C., Los Angeles, California, for Plaintiff-Appellant.

Dale Cendali (argued) and Mary Mazzello, Kirkland & Ellis

LLP, New York, New York; Diana M. Torres and Lauren

Schweitzer, Kirkland & Ellis LLP, Los Angeles, California;

Megan I. McKeown, Kirkland & Ellis LLP, Houston, Texas;

for Defendant-Appellee.

OPINION

RESTANI, Judge:

This case involves a trademark dispute between

Defendant-Appellee Apple Inc. (Apple) and Plaintiff-

Appellant Social Technologies LLC (Social Tech) over the

use of the MEMOJI mark under the Lanham Act, 15 U.S.C.

§ 1051 et seq. Social Tech challenges the district court’s

decision to grant summary judgment in Apple’s favor on the

basis that Social Tech did not engage in bona fide use of the

MEMOJI mark in commerce, as required by the Lanham

Act. Social Tech claims that its use of the MEMOJI mark

during pre-sales activities exhibited its bona fide intent to

use the mark in commerce, and that the district court

improperly determined that Social Tech rushed to market

solely to reserve its rights in the mark. We conclude that

summary judgment in favor of Apple is appropriate in this

case because there is no material issue of fact as to whether

Social Tech engaged in bona fide use of the MEMOJI mark

in commerce. The judgment of the district court is affirmed.

4 SOCIAL TECHNOLOGIES V. APPLE

BACKGROUND

In April 2016, Social Tech filed an intent-to-use

trademark application for the trademark MEMOJI, in

connection with mobile phone application software. 1

Following substantive examination, the United States Patent

and Trademark Office (USPTO) granted a Notice of

Allowance to Social Tech (notice that upon proof of use of

the mark in commerce, through the filing of a Statement of

Use, the registration would be issued) on January 30, 2018.

In March 2018, Social Tech sought, and was granted, a six-

month extension of time in which to file its Statement of Use.

After Social Tech filed its application, Lucky Bunny

LLC (LB) filed a trademark application based on actual use

in commerce for the MEMOJI trademark on April 3, 2017,

in connection with its mobile phone application software. 2

“MEMOJI” refers to the use of the word as a trademark, whereas

1

“Memoji” refers to the name of the mobile phone application.

2

The April 2017 trademark application was the second such

application that LB filed for the MEMOJI mark. In October 2014, LB

launched the mobile phone-based application Memoji, which allowed

users to transform photographs and videos of themselves into emoji-style

characters and to send such images and videos to others. The application

attracted tens of thousands of downloads and significant celebrity

attention. On October 29, 2014, LB filed its first trademark application

for the trademark MEMOJI in connection with mobile phone application

software based on actual use in commerce, and for the same mark in

connection with apparel on an intent-to-use basis. Apple claims that LB

maintained continuous use of the MEMOJI mark in commerce, as

individuals continued to download and use its application. Ultimately,

while LB had received a Notice of Allowance from the USPTO for its

application, the application was deemed abandoned in December 2015,

after LB failed to file a Statement of Use. In light of our disposition, we

need not decide whether LB acquired senior rights in MEMOJI and

assigned them to Apple or whether LB abandoned any rights it had.

SOCIAL TECHNOLOGIES V. APPLE 5

The examination of LB’s application was suspended until

the final disposition of Social Tech’s application became

clear. In May 2018, a representative acting on behalf of

Apple contacted Social Tech to inquire about its willingness

to sell the rights and goodwill associated with the MEMOJI

mark. Social Tech rejected this offer. Apple (through a third-

party subsidiary) then contacted LB and negotiated an

assignment of all of LB’s rights and goodwill associated

with the MEMOJI mark, including its suspended application

filed in April 2017. This assignment was executed in May

2018 and recorded with the USPTO in June 2018. 3 Apple

announced its acquisition of MEMOJI from LB on June 4,

2018, at the Worldwide Developers Conference. And on

June 25, Apple released a public beta version of a new

operating system that incorporated the Memoji software.

After filing its initial application in 2016, but before

Apple’s announcement on June 4, 2018, Social Tech

engaged in some early-stage activities to develop a business

plan and market its Memoji application to potential

customers and investors. Social Tech created promotional

materials and an investor presentation outlining its business

plan, unsuccessfully solicited investors in 2016, and

maintained a website promoting its Memoji application

beginning in January 2017. In 2018, prior to Apple’s

announcement, Social Tech secured funding in the amount

of $100,000 from a single employee investor. Although

Social Tech engaged in initial conversations with a software

developer regarding the Memoji mobile phone application

3

The agreement permitted LB to continue to offer its application

under its own name through a license-back provision which expired on

July 30, 2018, after which point LB’s website re-routed visitors to

Apple’s website.

6 SOCIAL TECHNOLOGIES V. APPLE

prior to Apple’s announcement, no code was written. 4 Thus,

Social Tech’s early-stage business activities prior to June 4,

2018, except for a single employee investment, were entirely

promotional.

In response to Apple’s announcement, Social Tech

accelerated its timeline to develop the Memoji software, and

on June 28, 2018, just three weeks later, launched its own

Memoji mobile phone application on the Google Play Store.

Two days later, on June 30, 2018, Social Tech filed a

Statement of Use with the USPTO. Its application matured

to a Trademark Registration (Reg. No. 5,566,242) on

September 18, 2018. One day prior, on September 17, 2018,

Apple launched its new iOS 12 operating system, which

incorporated Apple’s Memoji software into Apple devices.

Within a month of its release, Social Tech’s Memoji

application was downloaded more than 100 times, and

approximately 5,000 downloads are reported for 2018. It is

undisputed that Social Tech rushed to develop its Memoji

application after Apple’s announcement and that the

application it released three weeks later contained numerous

bugs. 5 Development of the software continued after the

application was released, and at some point, Google

removed the application for violating developer policies.

4

Social Tech does not dispute that essentially none of the code for

its Memoji application had been written prior to Apple’s announcement

on June 4, 2018.

5

According to Social Tech’s co-founder and president, it “felt

forced to advance the timeline for [its] MEMOJI app” after Apple’s

announcement on June 4 as its “anticipated release for MEMOJI was Fall

2019.”

SOCIAL TECHNOLOGIES V. APPLE 7

During the three weeks after Apple’s announcement,

Social Tech’s co-founder and president, Samuel Bonet,

exchanged a series of emails with a software developer to

accelerate the timing of the application’s development. In

the first of these emails on June 7, Bonet described the

circumstances to be “life changing” and concluded the email

with: “Time to get paid, gentlemen.” In a series of

subsequent emails, Bonet regularly followed up with the

developer on the application’s progress. On June 12, Bonet

wrote: “the app needs to erase the background AND the body

. . . Of course this may take a little work to get perfect, but

as long as we can get close initially, we can start to test and

put in commerce.” On the evening of June 13, Bonet wrote

to the developer: “[i]n other news . . . the initial letter has

been sent to Apple. The process has begun. Peace and

wealth!”

Bonet continued to follow up on the application’s

progress over the next several days, noting that “the editing

feature [was] vital” to “satisfy the ‘editing’ requirement of

the trademark.” On June 18, Bonet wrote that Social Tech

would release the application for Android in the Google Play

Store first, proclaiming: “We are lining up all of our

information, in preparation for a nice lawsuit against Apple,

Inc! We are looking REALLY good. Get your Lamborghini

picked out!”

Following the release of Social Tech’s application, the

correspondence continued between Bonet and the software

developer. On July 7, 2018, Bonet directed the approach in

updating the Memoji application for the purpose of

“show[ing] updates for the lawsuit” against Apple. “[I]f

possible,” he wrote, “[i]t’s better if we split up the updates,

so it looks like we have more of them for the lawsuit. To show

8 SOCIAL TECHNOLOGIES V. APPLE

we are currently trying to build as we go.” A week later, on

July 14, he wrote again to the developer:

The lawsuit is coming together nicely. We

should be done with the paperwork and forms

in the next several days, then we are just

waiting for the trademark registration to file

the lawsuit and get PAID. Almost there! How

are we looking on everything? What else do

you need from me . . . . Of course, it seems

best to split these [changes] up in to

individual updates, so it appears like we are

doing more work. We just need to show some

progress.

Apple commenced a cancellation proceeding before the

USPTO on September 26, 2018 to cancel Social Tech’s

registration for the MEMOJI mark. 6 Subsequently, Social

Tech filed suit in district court, alleging trademark

infringement against Apple under the Lanham Act and at

common law, along with unfair competition in violation of

California law, and seeking declaratory judgments of non-

infringement and of the validity of its MEMOJI mark

registration. Both parties moved for summary judgment, and

the district court granted summary judgment in favor of

Apple on the ground that no reasonable jury could find that

Social Tech engaged in bona fide use of the MEMOJI mark

in commerce within the meaning of the Lanham Act. As a

result, the district court held that Apple was entitled to

cancellation of Social Tech’s registration for the MEMOJI

6

Apple filed another trademark application for the MEMOJI mark

before the USPTO and received a USPTO Office Action noting that

Social Tech’s registration prevented Apple’s application from maturing

to registration due to a likelihood of confusion between the marks.

SOCIAL TECHNOLOGIES V. APPLE 9

mark. Social Tech appeals the district court’s determination

that it lacked bona fide use of the MEMOJI mark in

commerce.

JURISDICTION & STANDARD OF REVIEW

We have jurisdiction under 28 U.S.C. § 1291 over an

appeal of a final judgment. We review a district court’s grant

of summary judgment de novo, see Marketquest Grp., Inc.

v. BIC Corp., 862 F.3d 927, 931 (9th Cir. 2017), and viewing

the evidence in the light most favorable to the non-movant,

determine “whether there are any genuine issues of material

fact and whether the district court correctly applied the

relevant substantive law.” KP Permanent Make-Up, Inc. v.

Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005).

“Because of the intensely factual nature of trademark

disputes, summary judgment is generally disfavored in the

trademark arena.” Rearden LLC v. Rearden Com., Inc.,

683 F.3d 1190, 1202 (9th Cir. 2012) (quoting Interstellar

Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1109 (9th

Cir. 1999)). It is nonetheless appropriate where there is no

genuine issue of material fact. See id.

DISCUSSION

I. The Lanham Act

The Lanham Act provides for the registration of

trademarks. 15 U.S.C. § 1051 et seq. An applicant that files

an intent-to-use application must provide “a verified

statement that the mark is in use in commerce” to complete

registration of the mark. Id. § 1051(b), (d). 7 Use in

7

Trademark applications may be based on either (1) a bona fide

intent-to-use the mark in commerce or (2) actual use of the mark in

10 SOCIAL TECHNOLOGIES V. APPLE

commerce means “the bona fide use of a mark in the ordinary

course of trade, and not made merely to reserve a right in a

mark.” Id. § 1127. To qualify for registration, a trademark

must be “placed in any manner on the goods or their

containers or the displays associated therewith” and then the

goods must be “sold or transported in commerce.” Id. For

both goods and services, we have held that the Lanham Act’s

“‘use in commerce’ requirement includes (1) an element of

actual use, and (2) an element of display.” Chance v. Pac-

Tel Teletrac, Inc., 242 F.3d 1151, 1159 (9th Cir. 2001)

(citing 15 U.S.C. § 1127). At issue is whether Social Tech

used the MEMOJI mark in commerce such that its

registration is valid, and the mark is entitled to protection

under the Lanham Act.

commerce. Intent-to-use applications are filed pursuant to 15 U.S.C.

§ 1051(b), which states that “[a] person who has a bona fide intention,

under circumstances showing the good faith of such person, to use a

trademark in commerce may request registration of its trademark on the

principal register. . . .” 15 U.S.C. § 1051(b)(1). At the time of

application, the applicant must aver that they have a “bona fide intention

to use the mark in commerce,” id. § 1051(b)(3)(B), though actual use of

the mark is not required at the time of application. Trademark Law

Revision Act of 1988, Pub. L. No. 100-667, §§ 103, 126, 102 Stat. 3935,

3935–37, 3943 (adding 15 U.S.C. § 1051(b) and revising 15 U.S.C.

§ 1112 to permit an application on an intent-to-use basis, without use at

the time of application). For an application based on an intent to use the

mark, a statement of use of the mark in commerce must be filed with the

USPTO “[w]ithin six months after the date on which the notice of

allowance with respect to a mark is issued.”15 U.S.C. § 1051(d)(1).

Applications based on actual use in commerce are filed pursuant to

15 U.S.C. § 1051(a). At the time of application for a trademark actually

in use, the applicant must specify that (1) “the mark is in use in

commerce,” and (2) the date on which the mark was first used in

commerce, among other things. Id. §§ 1051(a)(2), (3)(C); see id. § 1127

(defining use in commerce).

SOCIAL TECHNOLOGIES V. APPLE 11

a. Use in Commerce Requirement

It is well-established that use in commerce within the

meaning of the Lanham Act requires use of a genuine

character. We have discussed in detail Congress’s

amendment of the Lanham Act in 1988 (also known as the

Trademark Law Revision Act of 1988 or “TLRA”), which

added the “bona fide” and “ordinary course of trade”

requirements to 15 U.S.C. § 1127 to strengthen “use in

commerce” and to “eliminate ‘token use’ as a basis for

registration.” Chance, 242 F.3d at 1156–57, 1159 (internal

quotation omitted) (“Congress amended the Lanham Act by

redefining the term ‘use in commerce’ to mean ‘the bona fide

use of a mark in the ordinary course of trade, and not made

merely to reserve a mark.’”); see Trademark Law Revision

Act of 1988, Pub. L. No. 100-667, § 134, 102 Stat. 3935,

3948, amending 15 U.S.C. § 1127; see also Brookfield

Commc’ns, Inc., v. W. Coast Ent. Corp., 174 F.3d 1036,

1051–52 (9th Cir. 1999). 8 Mere adoption of a mark without

bona fide use in commerce, in an attempt to reserve rights

for the future, is insufficient to establish rights in the mark

under the Lanham Act. Chance, 242 F.3d at 1157, 1159.

Furthermore, “trademark rights are not conveyed

through mere intent to use a mark commercially.”

Brookfield, 174 F.3d at 1052; see also Chance, 242 F.3d

at 1158–59. Rather, an applicant must show use in

commerce in a way “sufficiently public to identify or

distinguish the marked goods in an appropriate segment of

8

“Bona fide use” is not defined in the Lanham Act. The plain

meaning of bona fide use is use that is genuine, sincere and carried out

in good faith. See Bona Fide, Black’s Law Dictionary (11th ed. 2019);

see also Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc.,

458 F.3d 931, 936 n.3 (9th Cir. 2006).

12 SOCIAL TECHNOLOGIES V. APPLE

the public mind.” New West Corp. v. NYM Co. of Cal., Inc.,

595 F.2d 1194, 1200 (9th Cir. 1979) (internal quotation

marks omitted); see also 15 U.S.C. § 1127 (“The term

‘trademark’ includes any word, name, symbol, or device, or

any combination thereof . . . used by a person, or . . . which

a person has a bona fide intention to use in commerce and

applies to register . . . to identify and distinguish his or her

goods . . . from those manufactured or sold by others and to

indicate the source of the goods . . . .”). A “mark cannot

serve a source-identifying function if the public has never

seen the mark and thus is not meritorious of trademark

protection until it is used in public in a manner that creates

an association among consumers between the mark and the

mark’s owner.” Brookfield, 174 F.3d at 1051.

We consider the totality of the circumstances to

determine whether the “use in commerce” requirement has

been satisfied so as to establish rights under the Lanham Act.

Chance, 242 F.3d at 1159. Non-sales activities are relevant

where they may indicate whether a good or service has been

adequately and publicly used and displayed in commerce.

See id.; see also Rearden, 683 F.3d at 1205 (“[N]on-sales

activities such as solicitation of potential customers may be

taken into account as part of the ‘totality of the

circumstances’ inquiry.”). In Chance, we held:

[T]he district courts should be guided in their

consideration of non-sales activities by

factors we have discussed, such as the

genuineness and commercial character of the

activity, the determination of whether the

mark was sufficiently public to identify or

distinguish the marked service in an

appropriate segment of the public mind as

those of the holder of the mark, the scope of

SOCIAL TECHNOLOGIES V. APPLE 13

the non-sales activity relative to what would

be a commercially reasonable attempt to

market the service, the degree of ongoing

activity of the holder to conduct the business

using the mark, the amount of business

transacted, and other similar factors which

might distinguish whether a service has

actually been “rendered in commerce.”

242 F.3d at 1159. Our previous cases make clear that the

scope of the non-sales activity is “central to its weight in the

totality of the circumstances assessment.” Id. at 1160 n.4; see

also Brookfield, 174 F.3d at 1052–53.

In applying this approach in Chance, we determined that

promotional mailings of 35,000 postcards, which resulted in

128 responses but not a single sale, were insufficient to raise

a triable issue of fact as to “use in commerce” within the

meaning of the Lanham Act. See 242 F.3d at 1159–60.

Acknowledging that these early non-sales activities “may

have been some evidence of a commercial intent when [ ]

mailed,” we affirmed the district court’s grant of summary

judgment because the plaintiff “failed to come forward with

sufficient evidence to establish a triable issue of fact that [it]

genuinely continued to exploit the mark thereafter.” Id.

at 1160. The court concluded that plaintiff’s activities were

insufficient to establish a bona fide use because plaintiff had

not leased equipment necessary to operate its business, had

no working capital or marketing plan, and ordered no goods

from its supplier until after the relevant period. Id. In

contrast, we determined that defendant engaged in

significant activities using the mark on a continuous basis,

including using the mark as part of its business name,

developing a comprehensive public relations campaign,

distributing brochures, presenting to potential customers,

14 SOCIAL TECHNOLOGIES V. APPLE

and providing interviews to major newspapers. Id. at 1154–

55, 1160. We held that this conduct sufficiently established

bona fide use in commerce. Id. at 1160.

In later applying this same approach in Rearden, after

rejecting evidence of purely internal sales as insufficient to

satisfy the Lanham Act, we determined that genuine issues

of material fact existed because there was evidence that

plaintiffs provided services on at least one occasion to an

outside person. 683 F.3d at 1207–08. We cautioned that if

plaintiffs had “never provided or even offered their

incubation services to outsiders, their purported incubation

business would fail to meet either element of the ‘use in

commerce’ requirement” because they would have failed “to

show use in a way sufficiently public in nature to identify or

distinguish the services in an appropriate segment of the

public mind.” Id. at 1206–07. We emphasized that a mark

must be sufficiently public to warrant trademark protection

and that the Lanham Act requires external manifestation of

a mark to satisfy the use in commerce requirement. Id. at

1206–08.

b. Use in Commerce by Social Tech

Social Tech argues that the district court erred in

granting summary judgment because the evidence

sufficiently establishes a triable issue of fact over whether its

registration is valid under the Lanham Act. 9 Social Tech

contends that Apple is not entitled to cancellation because a

reasonable jury could infer that it engaged in bona fide use

of the MEMOJI mark in commerce, and that its actions had

9

Social Tech does not raise the common law and state law claims

raised before the district court. These issues are therefore waived on

appeal.

SOCIAL TECHNOLOGIES V. APPLE 15

a legitimate commercial purpose and were “not made merely

to reserve [its] right in [the] mark.” 15 U.S.C. § 1127. Apple

counters that the evidence compels the conclusion that

Social Tech did not engage in bona fide use of the MEMOJI

mark in commerce, but rather rushed to market solely to

reserve its right in the mark. Apple argues this makes Social

Tech’s registration invalid, entitling Apple to cancellation.

We agree with the district court. The evidence in the record

before us clearly shows Social Tech’s use of the MEMOJI

mark was not bona fide use in commerce.

i. Social Tech’s activities prior to June 4, 2018

Social Tech’s early activities fail to use the MEMOJI

mark in a sufficiently public manner to establish rights under

the Lanham Act. See Brookfield, 174 F.3d at 1051; Rearden,

683 F.3d at 1206–08; see also 15 U.S.C. § 1127. While more

than two years went by from the filing of its initial intent-to-

use application, Social Tech developed no code for its

Memoji application and had no sales. The scope of Social

Tech’s activities prior to Apple’s announcement of its

Memoji application — its maintenance of a website

containing promotional videos, early stage business

planning, a single internal $100,000 investment, and the

unsuccessful solicitation of any external investors — was not

sufficiently public to establish trademark rights, whether or

not Social Tech executed these activities with a good faith

intent to eventually use the mark in commerce. Compare

Brookfield, 174 F.3d at 1051–53 (holding mark use was not

sufficiently public when used in a website domain and in

“limited [ ] correspondence with lawyers and a few

customers”), with New West, 595 F.2d at 1200 (holding that

prominent display of a mark to 430,000 individuals through

mailings and a magazine supplement, resulting in 13,500

16 SOCIAL TECHNOLOGIES V. APPLE

subscriptions to New West magazine was sufficiently public

to warrant trademark protection).

Unlike in Rearden, there is no evidence that any outside

person identified the MEMOJI mark with Social Tech prior

to Apple’s announcement on June 4. See 683 F.3d at 1206–

07. Instead, Social Tech’s activities prior to June 4 are akin

to the promotional mailings we found insufficient to raise a

triable issue of fact as to “use in commerce” in Chance. See

242 F.3d at 1159–60. While these activities may serve as

some evidence of Social Tech’s commercial intent to use the

MEMOJI mark, as the district court correctly pointed out,

trademark rights are not granted on the basis of commercial

intent alone. See Brookfield, 174 F.3d at 1052. Because these

early activities created no “association among consumers

between the mark and the mark’s owner” they were not

“sufficiently public” to entitle Social Tech to trademark

protection for the MEMOJI mark. Id. at 1051; Chance,

242 F.3d at 1159. 10

Social Tech argues that these activities had a legitimate

business purpose, their limitations were based on reasonable

commercial needs, and therefore, it is entitled to trademark

protection for its use of the MEMOJI mark. Whatever Social

Tech’s intent at the time, its early activities were

insufficiently public to “identify or distinguish” its MEMOJI

mark “in an appropriate segment of the public mind.” See

Rearden, 683 F.3d at 1205 (quoting New West, 595 F.2d

at 1200); 15 U.S.C. § 1127. Accordingly, evidence of these

10

The fact that Social Tech on March 21, 2018 applied for an

extension of time to submit its Statement of Use further supports the

notion that as of that date even Social Tech believed that it had not

engaged in sufficient use to warrant registration of its MEMOJI mark.

See 15 U.S.C. § 1051(d) (requiring a filing of a Statement of Use to

register a mark).

SOCIAL TECHNOLOGIES V. APPLE 17

activities is not enough to raise a triable issue of fact over

whether Social Tech established rights to the MEMOJI mark

under the Lanham Act prior to Apple’s announcement on

June 4, 2018. No reasonable jury could find otherwise.

ii. Social Tech’s activities after June 4, 2018

By their nature, trademark disputes are highly fact

intensive inquiries, so we are reluctant to decide them at the

summary judgment stage except where it is unequivocally

clear that there is no triable issue of fact. See Rearden,

683 F.3d at 1202. The Lanham Act requires a genuine use of

a mark to merit trademark protection. It requires use in

commerce that is “bona fide” and “not made merely to

reserve a right in a mark.” 15 U.S.C. § 1127. Registration

based on token use is invalid. Id.; see also Chance, 242 F.3d

at 1156–57, 1159. The district court correctly concluded that

this case presents such a scenario. In reviewing the totality

of the circumstances in the record before us and construing

all inferences in favor of Social Tech, the evidence

unequivocally shows that Social Tech had no bona fide use

of the MEMOJI mark in commerce, and that it rushed to

release its Memoji application solely to reserve its rights in

the MEMOJI mark and form the basis of a lawsuit against

Apple.

Social Tech acknowledges that following Apple’s

announcement of its Memoji application on June 4, it rushed

to develop the code for and release its Memoji application,

but disputes that it did so for the sole purpose of reserving

its right to the MEMOJI mark. It is undisputed that Social

Tech released its application three weeks following Apple’s

announcement and subsequently filed a Statement of Use

with the USPTO to attempt to complete its registration.

18 SOCIAL TECHNOLOGIES V. APPLE

Contrary to Social Tech’s arguments, emails exchanged

with its software developer make clear that its use of the

MEMOJI mark was merely to reserve its rights for a lawsuit

against Apple. In correspondence between Social Tech and

its software developer, Bonet stated: “The lawsuit is coming

together nicely. . . . [W]e are just waiting for the trademark

registration to file the lawsuit and get PAID,” “[w]e are

lining up all of our information, in preparation for a nice

lawsuit against Apple, Inc! We are looking REALLY good.

Get your Lamborghini picked out!” and “[i]t’s better if we

split up the updates, so it looks like we have more of them for

the lawsuit.” The significance of this correspondence is

obvious. The timing of these emails, during the three weeks

the application was almost entirely developed and

immediately following the application’s launch, and the

content of these emails, leave no doubt as to Social Tech’s

intention in developing its Memoji application. The

correspondence compels the conclusion that Social Tech’s

intention to develop and release its Memoji application was

not a bona fide engagement of the mark in commerce, but

merely an attempt to reserve its MEMOJI trademark and

provide a basis for its lawsuit against Apple. We do not

suggest that rushing to develop a product or releasing a

product of low quality are themselves sufficient to preclude

a finding of bona fide use in commerce. But here, Social

Tech fails to provide any evidence that its use of MEMOJI

was bona fide.

Social Tech argues that the approximately 5,000

downloads of its Memoji application are enough to raise a

question of fact as to whether its use in commerce was bona

fide because our precedent has found that a single

SOCIAL TECHNOLOGIES V. APPLE 19

transaction in commerce may suffice. 11 Social Tech’s

trademark deficiencies, however, are of a fundamentally

different character. It is not the number of downloads that is

lacking here, but a lack of any evidence whatsoever that

suggests Social Tech developed its Memoji application for

genuine commercial reasons warranting trademark

protection. See La Societe Anonyme des Parfums le Galion

v. Jean Patou, Inc., 495 F.2d 1265, 1273 (2d Cir. 1974)

(holding that use of a trademark was not bona fide where its

“real purpose” in making sales “was to establish and

maintain rights in [its] trademark”). To the contrary, the

record contains overwhelming and clear evidence that Social

Tech’s use following Apple’s announcement was not

genuine. Rushed development of the Memoji software and

correspondence with its developer make clear that the

development of the Memoji application was for the purpose

of reserving Social Tech’s rights to the MEMOJI mark and

winning a lawsuit against Apple. Thus, the district court’s

conclusion is amply supported by the record on summary

judgment.

Because Social Tech failed to put forward evidence that

the release of its Memoji application to the public was for

genuine commercial purposes warranting trademark

protection, we conclude that it established no triable issue

regarding whether it engaged in bona fide use of the

MEMOJI mark in commerce within the meaning of the

11

Social Tech cites to Drop Dead Co., Inc., v. S.C. Johnson & Son,

Inc., 326 F.2d 87, 93–94 (9th Cir. 1963) (applying law superseded by the

TLRA), in support of the contention that a single transaction in

commerce is sufficient to constitute bona fide use of the mark. A single

sale, or non-sales activities alone, may suffice to merit trademark

protection upon review of the totality of the circumstances, so long as

the requirements of the Lanham Act are met. Brookfield, 174 F.3d

at 1052.

20 SOCIAL TECHNOLOGIES V. APPLE

Lanham Act. While at the time of its original intent-to-use

filing, Social Tech may have had some commercial intent to

develop the Memoji application, at the time it filed its

Statement of Use, its use of the MEMOJI mark was “made

merely to reserve a right in the mark.” 15 U.S.C. § 1127. The

totality of the record permits only one conclusion: that Social

Tech’s continued pursuit of trademark registration with the

USPTO was based on token use for the purposes of reserving

its trademark rights. See Chance, 242 F.3d at 1156–57, 1159.

Because this directly contravenes the express language of the

Lanham Act, the registration is invalid. 15 U.S.C. § 1127.

Accordingly, we affirm the district court’s grant of summary

judgment in favor of Apple.

II. Cancellation

The Lanham Act authorizes “any person who believes

that he is or will be damaged . . . by the registration of a

mark” to file a petition to cancel the mark’s registration.

15 U.S.C. § 1064. If a petition is filed “[w]ithin five years

from the date of the registration,” id. § 1064(1), then “any

ground that would have prevented registration in the first

place qualifies as a valid ground for cancellation,” Pinkette

Clothing, Inc., v. Cosmetic Warriors Ltd., 894 F.3d 1015,

1021 (9th Cir. 2018) (internal citation omitted). Because the

court concludes that Social Tech did not engage in bona fide

use of the MEMOJI mark in commerce, its registration is

invalid, and Apple is entitled to cancellation of Trademark

Registration No. 5,566,242. 15 U.S.C. §§ 1051(d), 1064.

CONCLUSION

For the reasons stated above, we affirm the district

court’s grant of summary judgment in favor of Apple.

AFFIRMED.