Social Technologies Llc, a Georgia limited liability company v. Apple Inc ., a California corporation

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
S OCIAL TECHNOLOGIES LLC, a
Georgia limited liability company,
Plaintiff-Appellant,
v.
APPLE INC ., a California corporation,
Defendant-Appellee.
No. 20-15241
D.C. No.
3:18-cv-05945-
VC
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.

-- 1 of 20 --

2 S OCIAL 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.

-- 2 of 20 --

S OCIAL 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.

-- 3 of 20 --

4 S OCIAL 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
1 “MEMOJI” refers to the use of the word as a trademark, whereas
“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.

-- 4 of 20 --

S OCIAL 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.

-- 5 of 20 --

6 S OCIAL 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.”

-- 6 of 20 --

S OCIAL 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

-- 7 of 20 --

8 S OCIAL 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.

-- 8 of 20 --

S OCIAL 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

-- 9 of 20 --

10 S OCIAL 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).

-- 10 of 20 --

S OCIAL 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).

-- 11 of 20 --

12 S OCIAL 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

-- 12 of 20 --

S OCIAL 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,

-- 13 of 20 --

14 S OCIAL 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.

-- 14 of 20 --

S OCIAL 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

-- 15 of 20 --

16 S OCIAL 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).

-- 16 of 20 --

S OCIAL 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.

-- 17 of 20 --

18 S OCIAL 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

-- 18 of 20 --

S OCIAL 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.

-- 19 of 20 --

20 S OCIAL 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.

-- 20 of 20 --