Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a very helpful opinion from the Ninth Circuit, the Court addressed the issue of “use in commerce” in connection with federal, intent-to-use trademark applications. Basically, the plaintiff filed an intent-to-use trademark application for MEMOJI in connection with mobile software applications. At some point while plaintiff’s application was pending, but before plaintiff filed a Statement of Use, Apple contacted the plaintiff to seek to purchase or license the MEMOJI. Plaintiff refused. A third party had also filed a similar, use-based trademark application for MEMOJI, the rights to which Apple then purchased (again, prior to the plaintiff filing a Statement of Use). Once Apple announced that software under the name MEMOJI would be in its iOS 12 operating system, the plaintiff rushed the development of its software and released it in the Google Play store. Plaintiff then filed a Statement of Use and its trademark registration issued. Plaintiff then sued Apple, and Apple sought to cancel plaintiff’s registration for lack of a bona fide use in commerce. The Northern District of California agreed with Apple and granted a motion for summary judgment that there was no bona fide use in commerce. The Ninth Circuit affirmed finding that there was no actual product development by plaintiff until after Apple announced its MEMOJI software. One interesting aspect of the Ninth Circuit decision was its rejection of the nearly 5,000 downloads of plaintiff’s app as evidence of genuine use in commerce. The Ninth Circuit said this was not evidence of a genuine commercial intent to use the mark, but an effort to reserve and obtain the mark for the purpose of suing Apple and securing a large payday. Correspondence between plaintiff and its software developer after Apple had publicized its software indicated that plaintiff’s focus was on suing Apple, not making a genuine, public use and display of its marks in association with its software. The takeaway here is that a bona fide intent to use a mark in commerce has some fairly stringent requirements, and trying to “finesse” or “fudge” things to meet those requirements is not advisable.
2. In an interesting move, the United States Patent and Trademark Office (USPTO) has apparently filed for trademark protection on its own logos. The reason is that there are a significant number of fraudsters out there who send trademark applicants (even if represented by counsel) bogus notices of fees due, or even semi-accurate notices that trademark renewal fees are coming due. In fact, on its website, the USPTO maintains a list of some of the fraudsters and has a substantial amount of information about such issues to protect unwitting applicants. The takeaway here is simple, if you are a trademark applicant, and even if you are represented by counsel, if you receive a notice about renewal fees or other fees that are allegedly due, contact a/your trademark attorney promptly and do not assume the solicitation is legitimate.
3. Following up on a copyright infringement case filed by Apple that we previously wrote about (Takeaway No. 2), it appears the parties have settled in the run up to a trial. The case, pending in the Southern District of Florida, involved a startup that essentially made a copy of Apple’s iOS operating system for purposes of research and security analysis. In the decision we previously reported on, the Court determined that it was a fair use under copyright law for a company to download Apple iOS software onto a computer to use it for analyzing security weaknesses in the software. The use was found to be transformative, and not simply one to make the software available to others for the same use as Apple’s. The remaining issue for trial was whether the startup’s apparent circumvention of Apple’s encryption security for the iOS code was a violation of the anti-circumvention provision of the Digital Millennium Copyright Act (DMCA). The posture of the case (i.e., that Apple received a negative ruling on fair use, but that there remained a viable DMCA claim for trial likely led the parties to settle. It appears, however, that any settlement may have contained a “carve-out” permitting Apple to appeal the adverse fair use ruling.