Social Tech "Memoji" Trademark Complaint

Case 3:18-cv-05945 Document 1 Filed 09/27/18 Page 1 of 15
Nicholas Ranallo (SBN 275016)

1 nick@ranallolawoffice.com
2 Of Counsel, Mavronicolas & Dee LLP
2443 Fillmore St., #380-7508
3 San Francisco, CA 94115
T: (831) 607-9229
4 F: (831) 533-5073
5 Peter Dee (pro hac vice to be filed)
6 pdee@mavrolaw.com
Mavronicolas & Dee LLP
7 3 Park Avenue, 15th Floor
New York, NY 10016
8 T: (646) 770-1256
F: (866) 774-9005
9
10 Attorneys for Plaintiff Social Technologies LLC
11
UNITED STATES DISTRICT COURT
12 NORTHERN DISTRICT OF CALIFORNIA
13
14 SOCIAL TECHNOLOGIES LLC, a Georgia Case Number:
15 limited liability company,
16 Plaintiff, COMPLAINT FOR
17 vs. (1) Trademark Infringement

(Lanham Act)
18
APPLE INC., a California corporation,
19 (2) Trademark Infringement
Defendant. (Common Law)
20
(3) Unfair Competition (Cal. Bus.
21 & Prof. Code §17200)
22
(4) Declaratory Judgment of Validity
23
(5) Declaratory Judgment of Non-
24 Infringement
25
26 DEMAND FOR JURY TRIAL
27
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1
Complaint
Plaintiff Social Technologies Inc. (“Social Tech”) brings this action to enjoin Apple, Inc.’s
1
2 (“Apple”) illegal use of Social Tech’s MEMOJI trademark. Social Tech seeks preliminary and
3 permanent injunctive relief and all other remedies available under the laws of the United States and
4 the State of California and alleges with knowledge as to itself and its own acts, and on information
5 and belief as to all other matters, as follows:
6
NATURE OF ACTION
7
1. In April, 2016, Social Tech filed an intent-to-use application with the PTO for a
8
stylized mark which includes as its dominant element the word “MEMOJI”.
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10 2. Social Tech uses the mark in commerce in connection with a messaging mobile
11 application and has received a registered trademark (hereinafter “MEMOJI”).

12 3. Before Social Tech obtained the registration, and with full notice of Social Tech’s
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pending application, Apple, upon information and belief, formed a subsidiary - non-party Memofun
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Apps LLC (“Memofun”) - to become the assignee of purported goodwill connected to a forgotten
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and abandoned mobile application using the name Memoji, and a suspended trademark application
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17 that went along with it, from non-party assignors Big 3 ENT, LLC and Lucky Bunny, LLC.
18 4. Memofun then assigned those purported rights to Defendant Apple on June 4, 2018.
19 5. On the same day, Apple announced a feature for its new operating system, which
20 was subsequently released to the public on September 17, 2018, called and marketed as “Memoji”
21
(hereinafter the “Infringing Memoji”).
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6. Apple’s Infringing Memoji feature allows users to make animated caricatures of
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themselves and send them in messages to friends and family.
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25 7. As Apple well knew, however, Social Tech had a pending trademark application and
26 had used the MEMOJI mark in commerce on an app available in the Google Play store since June
27 28, 2018, and in online marketing prior thereto.

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2
Complaint
8. Social Tech’s MEMOJI app allows users to send edited pictures and videos in
1
2 messages to others.
3 9. The United States Patent and Trademark Office (“PTO”) registered MEMOJI to
4 Social Tech on September 18, 2018 (Reg. No. 5,566,242).

5 10. Apple’s Infringing Memoji deliberately infringes on Social Tech’s MEMOJI mark.
6
Social Tech thus brings this action for preliminary and permanent injunctive relief and all other
7
remedies available to address Apple’s deliberate and unlawful conduct.
8
PARTIES
9
10 11. Plaintiff Social Technologies LLC is a limited liability company organized and existing
11 under the laws of the State of Georgia and has a principal place of business in Atlanta, Georgia.
12 12. Defendant Apple, Inc. is a corporation organized and existing under the laws of the
13
State of California and has a principal place of business in Cupertino, California.
14
JURISDICTIONAL STATEMENT
15
Jurisdiction
16
17 13. The Court has jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338,
18 15 U.S.C. § 1116 and 1125, and 28 U.S.C. § 1367.
19 Venue
20 14. Venue lies within this district because a substantial part of the events giving rise to
21
these claims occurred in this district and Apple resides in this district for purposes of 28 U.S.C. §
22
1391(b) and (c).
23
Intradistrict Assignment
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25 15. This action arises in Santa Clara County because a substantial part of the events
26 giving rise to the claim occurred in Santa Clara County. This is an intellectual property action subject
27 to district-wide assignment pursuant to Civil L.R. 3-2(c).

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3
Complaint
FACTUAL ALLEGATIONS
1
2 Social Tech’s MEMOJI App
3 16. Social Tech is a company focused on the development of mobile applications to
4 enhance the personal messaging experience. Social Tech has previously released an app known as
5 “HELLOJIS” and another more recently, “MEMOJI”.
6
17. Social Tech’s MEMOJI app allows users to edit videos and photographs and send as
7
messages. Social Tech came up with the name MEMOJI in 2016 and filed an intent-to-use
8
application on April 1, 2016 after seeing that the name was not in use.
9
10 Social Tech’s MEMOJI trademark is:
11
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18. On November 15, 2017, the PTO issued a “Notice of Publication” for MEMOJI,
16
explaining that “The mark of the application identified appears to be entitled to registration,” and
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that the mark would be published on December 5, 2017.
18
19 19. No opposition was filed with the PTO, and the PTO entered a Notice of Allowance
20 on January 30, 2018.
21 20. On or around May 21, 2018, an unknown person believed to be acting at the direction
22 of Apple left a message with Social Tech inquiring about buying its rights in the name MEMOJI.
23
21. Social Tech returned the call and, after the inquiring person declined to identify the
24
company he worked for, indicated that its rights in the name MEMOJI were not for sale.
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4
Complaint
22. Social Tech filed its Statement of Use on June 30, 2018 and the PTO registered Social
1
2 Tech’s MEMOJI mark on September 18, 2018 (Reg. No. 5,566,242}, with a “first use” and use “in
3 commerce” of June 28, 2018 - the date the app became available through the Google Play store:
4
5
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15
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17 Apple Announces “Memoji” for Its New iPhone
18
23. On June 4, 2018, Apple announced its new iPhone operating system for the iPhone.
19
Among the new features Apple touted in the press release was the Infringing Memoji.
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Complaint
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3
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5
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Apple’s press release detailed the Infringing Memoji feature in more detail:
14
15 New features make communicating with friends and family from
iPhone X more expressive with new Animoji and personalized
16 Memoji characters that are customizable and fun. Create beautifully
designed Memoji right within Messages by choosing from a set of
17 inclusive and diverse characteristics to form a unique personality. The
18 existing set of Animoji also expands with ghost, koala, tiger and T.
rex. All Animoji and Memoji now feature winks and tongue detection
19 to capture even more expressions.
20 https://www.apple.com/newsroom/2018/06/apple-previews-ios-12/
21
22 24. Apple aggressively marketed the Infringing Memoji as a part of the launch of its new
23 operating system.
24 Apple’s Willful Infringement Causes Confusion and Damage

25 25. Apple’s launch of the Infringing Memoji completely swamped Social Tech’s efforts
26
to associate the MEMOJI mark with its own brand.
27
26. MEMOJI is an invented word that does not appear in any common dictionaries.
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6
Complaint
27. Both Social Tech and Apple are using MEMOJI for very similar products: software
1
2 to create images using a device’s camera that are edited, embedded into messages and sent. Both
3 have filed PTO applications under the same Class (09 Computer Application Software – Social
4 Tech’s has matured to registration; Apple’s is “suspended” because of Social Tech’s prior filed
5 application and likelihood of confusion).
6
28. Both Social Tech and Apple are marketing their MEMOJI brands using very similar
7
messaging: for Social Tech, that MEMOJI is “The world’s best messaging app that will capture the
8
facial expression of the end user with full-motion capabilities, and transpose the image into a
9
10 custom, personalized emoji of the users actual face;” for Apple, its Infringing Memoji feature
11 “make[s] communicating with friends and family from iPhone X more expressive with . . .
12 personalized Memoji characters that are customizable and fun”.
13
29. Both Social Tech and Apple are using their products through the same channels,
14
namely, through mobile phones and devices—for Social Tech MEMOJI is available through the
15
Google Play store for use on Android phones; for Apple, Infringing Memoji is touted as a messaging
16
17 feature for iPhones and iPads.
18 30. These obvious similarities, coupled with the sheer size of Apple compared to small
19 startup Social Tech, make it difficult for Social Tech to protect its MEMOJI brand and reputation,
20 and to develop goodwill and identity.
21
31. After Apple used its biggest platform - its yearly keynote address - to announce the
22
Infringing Memoji, Social Tech decided to cut its funding and development process short and
23
advance the timeline for its MEMOJI app (to stem whatever loss it could from Apple’s use of the
24
25 Infringing Memoji.
26 32. Social Tech released a basic but functional version of its app through the Google
27 Play store on June 28, 2018.

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Complaint
33. If Apple had not announced its Infringing Memoji product, Social Tech could have
1
2 proceeded with the full development of the MEMOJI app on its planned schedule and released a
3 more complete product rather than having to rush to market with a more basic product.
4 34. Apple’s infringing product has, since the day of its announcement, caused Social
5 Tech to lose control of its brand: a Google search and YouTube search for MEMOJI is dominated
6
by Apple’s Infringing Memoji.
7
35. Apple is a classic willful infringer. Apple knew about Social Tech’s senior rights to
8
MEMOJI, both as a matter of registration with the PTO and a matter of use by Social Tech in
9
10 commerce.
11 36. Apple knew that its Infringing Memoji feature was such a closely related service to
12 Social Tech’s MEMOJI app that confusion was virtually certain, and Apple knew or should have
13
known that its assignment from Lucky Bunny was in gross. Yet, Apple still went ahead and used
14
the Infringing Memoji mark anyway.
15
37. As expected, comments posted online by users and potential users have expressed
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17 actual confusion and frustration after finding Social Tech’s MEMOJI instead of Apples, a classic
18 case of reverse confusion. In one instance, a negative review was left on Social Tech’s Google Play
19 store because Social Tech MEMOJI didn’t offer the same functionality as Apple’s Infringing
20 Memoji.
21
38. Counsel for Social Tech sent a letter to Apple on June 13, 2018, informing Apple of
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Social Tech’s full intention to release its MEMOJI app and carry through filing the of Statement of
23
Use to obtain a registration.
24
25 39. Despite this notice and subsequent registration of Social Tech’s MEMOJI mark on
26 September 18, 2018, Apple has not changed the name of its Infringing Memoji feature or stopped
27 its willful, deliberate infringement of Social Tech’s mark.

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8
Complaint
40. In or about September 2018, Apple released its new operating system to the general
1
2 public with the Infringing Memoji feature included.
3 41. This release has exacerbated the confusion that Apple started with its June 4, 2018
4 product announcement and will result in the further association of the MEMOJI mark with Apple
5 even though the name belongs to Social Tech.
6
7
FIRST CAUSE OF ACTION
8
(Trademark Infringement – Lanham Act)
9
10 42. Social Tech repeats and realleges each and every previous allegation and
11 incorporates them by reference as if fully set forth herein.

12 43. Social Tech has used the MEMOJI mark to seek investors since April 2016.
13
44. Social Tech has used the MEMOJI mark since January 4, 2017 on its website and on
14
YouTube.
15
45. Social Tech has used the MEMOJI mark since June 28, 2018 on the Google Play
16
17 store where its app is offered, as well as on Facebook and other social media, in an effort to identify
18 with MEMOJI across the United States, including California, and worldwide.
19 46. In addition, Social Tech has a valid, registered trademark (Reg. No. 5,566,242) for
20 MEMOJI. Social Tech thus has an action under the Lanham Act’s protections for registered and
21
unregistered marks.
22
47. Apple’s use of the Infringing Memoji mark infringes on Social Tech’s MEMOJI
23
mark and has caused and will likely continue to cause confusion as to source, sponsorship,
24
25 affiliation, or association.
26 48. With two companies using the near identical mark consisting of a made-up word to
27 sell a very similar product (both related to mobile messaging), confusion is highly likely: actual or
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9
Complaint
potential customers of Social Tech’s MEMOJI are likely to be confused and believe Apple is the
1
2 true source, sponsor, or approver of Social Tech’s app, and vice versa; actual or potential customers
3 of Apple’s Infringing Memoji may be confused and believe Social Tech is the true source, sponsor,
4 or approver of Apple’s “Memoji.”

5 49. Apple’s wrongful activities have caused Social Tech irreparable injury. Even after
6
receiving the June 13, 2018 letter from Social Tech’s counsel, Apple continues to use the Infringing
7
Memoji mark. This causes injury and loss of control over Social Tech’s goodwill and reputation,
8
and loss of identity and ability to move into new markets that cannot be remedied through damages,
9
10 and Social Tech has no adequate remedy at law.
11 50. Social Tech is entitled to preliminary and permanent injunctions pursuant to 15

12 U.S.C. § 1116 restraining and enjoining Apple and its agents, servants, employees, and all persons
13
acting thereunder, in concert with, or on their behalf, from using in commerce the Infringing Memoji
14
mark or any colorable imitation thereof.
15
51. Pursuant to 15 U.S.C. § 1117, Social Tech is also entitled to recover (1) Apple’s
16
17 profits (2) Social Tech’s ascertainable damages, and (3) Social Tech’s costs of suit.
18 52. Apple’s willful infringement of Social Tech’s MEMOJI mark without excuse or
19 justification renders this an exceptional case and entitles Social Tech to its reasonable attorneys’
20 fees.
21
SECOND CAUSE OF ACTION
22
(Trademark Infringement – Common Law)
23
53. Social Tech repeats and realleges each and every previous allegation and
24
26 54. Social Tech has common law rights in the MEMOJI mark under California law.
27 Social Tech has used the MEMOJI mark since April 2016 in seeking investors, since January 4,
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10
Complaint
2017 on its website and on YouTube, and since June 28, 2018 on the Google Play store where its
1
2 app is offered, as well as on Facebook and other social media, all starting several years before Apple
3 announced its Infringing Memoji feature on June 4, 2018.
4 55. Apple’s use of the Infringing Memoji mark infringes on Social Tech’s MEMOJI
5 mark and has caused and will likely continue to cause confusion as to source, sponsorship,
6
affiliation, or association.
7
56. Apple’s wrongful activities have caused Social Tech irreparable injury which cannot
8
be remedied through damages, and Social Tech has no adequate remedy at law. Social Tech is
9
10 entitled to preliminary and permanent injunctions pursuant to 15 U.S.C. § 1116 restraining and
11 enjoining Apple and its agents, servants, employees, and all persons acting thereunder, in concert
12 with, or on their behalf, from using in commerce the Infringing Memoji mark or any colorable
13
imitation thereof.
14
57. Social Tech is also entitled to recover (1) Apple’s profits (2) Social Tech’s
15
ascertainable damages, and (3) Social Tech’s costs of suit. Apple’s willful infringement of Social
16
17 Tech’s MEMOJI mark without excuse or justification entitles Social Tech to its reasonable attorney
18 fees and punitive damages.
19 THIRD CAUSE OF ACTION

20 (Unfair Competition – Cal. Bus. & Prof. Code § 17200 and Common Law)
21
58. Social Tech repeats and realleges each and every previous allegation and
22
incorporates them by reference as if fully set forth herein.
23
59. Apple’s acts, as alleged above, constitute unlawful and/or unfair business practices
24
25 in violation of the California Unfair Competition Law (“UCL”), Cal. Bus. & Prof. Code §§ 17200
26 et seq.
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Complaint
60. Apple’s acts are unlawful and/or unfair under the UCL because Apple’s use of the
1
2 Infringing Memoji mark in California is likely to confuse consumers as to the source, origin, or
3 affiliation of both Social Tech’s and Apple’s services.
4 61. Apple’s acts of unfair competition in the state of California have caused Social Tech
5 irreparable injury. Social Tech believes that unless said conduct is enjoined by this Court, Apple
6
will continue and expand these activities to the continued and irreparable injury of Social Tech. This
7
injury includes injury to Social Tech’s reputation that cannot be remedied through damages, and
8
Social Tech has no adequate remedy at law.
9
10 62. Social Tech is entitled to preliminary and permanent injunction restraining and
11 enjoining Apple and its agents, servants, employees, and all persons acting thereunder, in concert
12 with, or on their behalf, from using in commerce the Infringing Memoji trademark or any colorable
13
imitation thereof.
14
63. As a direct and proximate result of Apple’s statutory unfair competition, Apple has
15
been unjustly enriched in an amount to be determined at trial.
16
17 FOURTH CAUSE OF ACTION
18 (DECLARATORY JUDGMENT THAT SOCIAL TECH’S TRADEMARK

REGISTRATONS ARE VALID AND ENFORCEABLE UNDER THE REQUIREMENTS
19 OF THE PTO AND THE LANHAM ACT)
21
incorporates them by reference as if fully set forth herein.
22
65. An actual case or controversy exists between Social Tech and Apple as to whether
23
Social Tech has the right to use the trademarks they created under the Lanham Act, 15 U.S.C. §§
24
25 1051 et seq., and that Social Tech’s U.S. Trademark Registration No. 5,566,242 for the stylized
26 wording “MEMOJI” is a valid and enforceable registration as issued by the United States Patent and
27 Trademark Office.
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12
Complaint
66. In a letter dated June 14, 2018, counsel for Apple stated to Social Tech, through
1
2 counsel, that if Social Tech’s application matured to registration, which it since has, “Apple will be
3 able to cancel the registration because Apple’s common law rights in the MEMOJI mark predate
4 your client’s April 1, 2016 filing date.”

5 67. Apple stated in the same letter that, assuming likelihood of confusion – which Apple
6
has since admitted - Social Tech’s use of its MEMOJI mark infringes Apple’s Infringing Memoji
7
“because Apple’s rights are prior to those of [Social Tech]”.
8
67. Apple has no common law rights in the MEMOJI mark.
9
10 68. A judicial declaration is therefore necessary and appropriate so that Social Tech may
11 ascertain its rights regarding the use of its trademark registration under 15 U.S.C. §§ 1051 et seq.
12 69. Social Tech seeks a declaration that it owns and has the right to use its MEMOJI
13
trademark for any and all purposes and that its MEMOJI Mark is a valid, enforceable and federally
14
registered mark protectible under the Lanham Act as issued by the PTO. In addition, Social Tech
15
seeks a declaration that Apple is not entitled to a federal registration for the mark MEMOJI.
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17 FIFTH CAUSE OF ACTION
18 (DECLARATION OF NON-INFRINGEMENT UNDER COMMON LAW)
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70. Social Tech’s seeks a judicial declaration that its use of its MEMOJI mark does not
22
infringe, and at all times has not infringed, any existing and valid marks owned by Apple through
23
common law use.
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Complaint
PRAYER FOR RELIEF

1
2 WHEREFORE, Social Tech hereby requests that this Court:
3 A. Enter preliminary and permanent injunctions restraining and enjoining Apple and its
4 agents, servants, employees, and all persons acting thereunder, in concert with, or on their behalf,
5 from using in commerce the Infringing Memoji mark or any colorable imitation or confusingly
6
similar variation thereof;
7
B. Award Social Tech its ascertainable damages, costs, and attorney fees, including
8
royalty fees, damages for corrective advertising, and punitive damages;
9
10 C. Award Social Tech Apple’s profits attributable to Apple’s unauthorized use of Social
11 Tech’s MEMOJI mark;

12 D. Award Social Tech all amounts by which Apple has been unjustly enriched through
13
its use of Social Tech’s MEMOJI mark;
14
E. Declare that Social Tech that it owns and has the right to use its MEMOJI trademark
15
for any and all purposes and that its MEMOJI Mark is a valid, enforceable and federally registered
16
17 mark protectible under the Lanham Act as issued by the PTO, and that Apple is not entitled to a
18 federal registration for the mark MEMOJI.
19 F. Declare that Social Tech’s use of its MEMOJI mark does not infringe any existing
20 and valid marks owned by Apple through common law use.
21
G. Award such other and further relief as this Court deems just and proper.
22
Social Tech demands a trial by jury on all issues so triable.
23
24 Dated: September 27, 2018
25
26
27 Respectfully submitted,
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Complaint
1 /s/Nicholas Ranallo
Nicholas Ranallo, Attorney at Law
2 nranallo@mavrolaw.com
2443 Fillmore St. #380-7508
4 San Francisco, CA 94115
P: (831) 607-9229
5 F: (831) 533-5073
6
Peter Dee (pro hac vice to be filed)
7 pdee@mavrolaw.com
3 Park Avenue, 15th Floor
8 New York, NY 10016
T: (646) 770-1256
9 F: (866) 774-9005
10
Attorneys for Plaintiff Social Technologies LLC
11
12
13
DEMAND FOR TRIAL BY JURY
14
Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff hereby demands a jury
15
trial on all issues and causes of action triable to a jury.
16
17 Respectfully submitted,
18
/s/Nicholas Ranallo
19 Nicholas Ranallo, Attorney at Law
nranallo@mavrolaw.com
2443 Fillmore St. #380-7508
21
San Francisco, CA 94115
22 P: (831) 607-9229
F: (831) 533-5073
23
Peter Dee (pro hac vice to be filed)
24
pdee@mavrolaw.com
25 3 Park Avenue, 15th Floor
New York, NY 10016
26 T: (646) 770-1256
F: (866) 774-9005
27
28 Attorneys for Plaintiff Social Technologies LLC
15
Complaint
Case 3:18-cv-05945 Document 1-1 Filed 09/27/18 Page 1 of 3
Exhibit A
Reg. No. 5,566,242 SOCIAL TECHNOLOGIES LLC (GEORGIA LIMITED LIABILITY COMPANY)
881 N. Highland Avenue Ne
Registered Sep. 18, 2018 Apt. 19
Atlanta, GEORGIA 30306
Int. Cl.: 9 CLASS 9: Computer application software for mobile phones, namely, software for recording,
editing, and distributing images, videos, and audio; computer application software for mobile
Trademark phones, computers, and tablets, namely, software for recording, editing, and distributing
images, videos, and audio; downloadable mobile applications for recording, editing, and
Principal Register distributing images, videos, and audio; downloadable software in the nature of a mobile
application for recording, editing, and distributing images, videos, and audio
FIRST USE 6-28-2018; IN COMMERCE 6-28-2018
The color(s) black, white, gray, brown, tan, red and pink is/are claimed as a feature of the
mark.
The mark consists of the stylized wording "MEMOJI" appearing in white on a black
background with a white oval with gray highlighting replacing the letter "O", a woman's
cross-eyed face appearing within the oval with brown hair, tan skin, brown eyebrows, black
and white eyes, pink cheeks and red lips. A partial reflection of the wording and design
appears inverted directly below "MEMOJI" in gray, tan, brown, black red and pink.
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Nicole Martin,
whose consent(s) to register is made of record.
SER. NO. 86-961,925, FILED 04-01-2016

REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*

What and When to File:
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*

What and When to File:
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an

extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5566242
JS-CAND 44 (Rev. 06/17) Case 3:18-cv-05945 Document 1-2 Filed 09/27/18 Page 1 of 1
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THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
PTF DEF PTF DEF
1 U.S. Government Plaintiff 3 Federal Question Citizen of This State 1 1 Incorporated or Principal Place 4 4
(U.S. Government Not a Party)
of Business In This State
Citizen of Another State 2 2 Incorporated and Principal Place 5 5
2 U.S. Government Defendant 4 Diversity of Business In Another State
(Indicate Citizenship of Parties in Item III)
Citizen or Subject of a 3 3 Foreign Nation 6 6
Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only)

CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure of 422 Appeal 28 USC § 158 375 False Claims Act
120 Marine Property 21 USC § 881 423 Withdrawal 28 USC 376 Qui Tam (31 USC
310 Airplane 365 Personal Injury Product
130 Miller Act Liability 690 Other § 157 § 3729(a))
315 Airplane Product Liability
140 Negotiable Instrument 367 Health Care/ LABOR PROPERTY RIGHTS 400 State Reapportionment
320 Assault, Libel & Slander
150 Recovery of Pharmaceutical Personal 410 Antitrust
330 Federal Employers 710 Fair Labor Standards Act 820 Copyrights
Overpayment Of Injury Product Liability 430 Banks and Banking
Liability 720 Labor/Management 830 Patent
Veterans Benefits 368 Asbestos Personal Injury 450 Commerce
340 Marine Relations 835 Patent Abbreviated New
151 Medicare Act Product Liability
345 Marine Product Liability 740 Railway Labor Act Drug Application 460 Deportation
152 Recovery of Defaulted PERSONAL PROPERTY 470 Racketeer Influenced &
350 Motor Vehicle 751 Family and Medical 840 Trademark
Student Loans (Excludes 370 Other Fraud Corrupt Organizations
355 Motor Vehicle Product Leave Act
Veterans) 371 Truth in Lending SOCIAL SECURITY
Liability 790 Other Labor Litigation 480 Consumer Credit
153 Recovery of 380 Other Personal Property 861 HIA (1395ff)
360 Other Personal Injury 791 Employee Retirement 490 Cable/Sat TV
Overpayment Damage Income Security Act 862 Black Lung (923) 850 Securities/Commodities/
of Veterans Benefits 362 Personal Injury -Medical
Malpractice 385 Property Damage Product 863 DIWC/DIWW (405(g)) Exchange
160 Stockholders Suits Liability IMMIGRATION
864 SSID Title XVI 890 Other Statutory Actions
190 Other Contract 462 Naturalization
CIVIL RIGHTS PRISONER PETITIONS 865 RSI (405(g)) 891 Agricultural Acts
195 Contract Product Liability Application
440 Other Civil Rights HABEAS CORPUS FEDERAL TAX SUITS 893 Environmental Matters
196 Franchise 465 Other Immigration
441 Voting 463 Alien Detainee Actions 895 Freedom of Information
870 Taxes (U.S. Plaintiff or
REAL PROPERTY 442 Employment Act
510 Motions to Vacate Defendant)
210 Land Condemnation Sentence 896 Arbitration
443 Housing/ 871 IRSThird Party 26 USC
220 Foreclosure Accommodations 530 General § 7609 899 Administrative Procedure
445 Amer. w/Disabilities Act/Review or Appeal of
230 Rent Lease & Ejectment 535 Death Penalty
Employment Agency Decision
240 Torts to Land OTHER
446 Amer. w/DisabilitiesOther 950 Constitutionality of State
245 Tort Product Liability 540 Mandamus & Other Statutes
290 All Other Real Property 448 Education
550 Civil Rights
555 Prison Condition
560 Civil Detainee
Conditions of
Confinement
V. ORIGIN (Place an “X” in One Box Only)

1 Original 2 Removed from 3 Remanded from 4 Reinstated or 5 Transferred from 6 Multidistrict 8 Multidistrict
Proceeding State Court Appellate Court Reopened Another District (specify) LitigationTransfer LitigationDirect File
VI. CAUSE OF Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
ACTION
Brief description of cause:
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, Fed. R. Civ. P. JURY DEMAND: Yes No
VIII. RELATED CASE(S), JUDGE DOCKET NUMBER

IF ANY (See instructions):
IX. DIVISIONAL ASSIGNMENT (Civil Local Rule 3-2)
(Place an “X” in One Box Only) SAN FRANCISCO/OAKLAND SAN JOSE EUREKA-MCKINLEYVILLE
DATE SIGNATURE OF ATTORNEY OF RECORD

Social Tech &quot;Memoji&quot; Trademark Complaint

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Social Tech &quot;Memoji&quot; Trademark Complaint

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Case 3:18-cv-05945 Document 1 Filed 09/27/18 Page 1 of 15

Nicholas Ranallo (SBN 275016)

16 Plaintiff, COMPLAINT FOR

17 vs. (1) Trademark Infringement

11 application and has received a registered trademark (hereinafter “MEMOJI”).

27 28, 2018, and in online marketing prior thereto.

4 Social Tech on September 18, 2018 (Reg. No. 5,566,242).

18 15 U.S.C. § 1116 and 1125, and 28 U.S.C. § 1367.

27 to district-wide assignment pursuant to Civil L.R. 3-2(c).

3 16. Social Tech is a company focused on the development of mobile applications to

20 on January 30, 2018.

24 Apple’s Willful Infringement Causes Confusion and Damage

27 Play store on June 28, 2018.

27 its willful, deliberate infringement of Social Tech’s mark.

11 incorporates them by reference as if fully set forth herein.

4 or approver of Apple’s “Memoji.”

11 50. Social Tech is entitled to preliminary and permanent injunctions pursuant to 15

3 announced its Infringing Memoji feature on June 4, 2018.

18 fees and punitive damages.

19 THIRD CAUSE OF ACTION

3 affiliation of both Social Tech’s and Apple’s services.

18 (DECLARATORY JUDGMENT THAT SOCIAL TECH’S TRADEMARK

4 your client’s April 1, 2016 filing date.”

18 (DECLARATION OF NON-INFRINGEMENT UNDER COMMON LAW)

PRAYER FOR RELIEF

11 Tech’s MEMOJI mark;

18 federal registration for the mark MEMOJI.

FIRST USE 6-28-2018; IN COMMERCE 6-28-2018

SER. NO. 86-961,925, FILED 04-01-2016

REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

Requirements in the First Ten Years*

Requirements in Successive Ten-Year Periods*

Grace Period Filings*

*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an

IV. NATURE OF SUIT (Place an “X” in One Box Only)

V. ORIGIN (Place an “X” in One Box Only)

VIII. RELATED CASE(S), JUDGE DOCKET NUMBER

DATE SIGNATURE OF ATTORNEY OF RECORD

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