Trademarks

Token Use Won't Save a Registration: Social Technologies v. Apple and the 'Memoji' Mark

The Ninth Circuit holds that a rushed, litigation-driven app launch is not the bona fide use in commerce the Lanham Act demands — and Apple gets the MEMOJI registration cancelled.

April 21, 2026
Smartphone displaying a messaging app with animated emoji characters
The MEMOJI dispute turned on whether a hastily shipped app counted as genuine commercial use. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Social Technologies LLC v. Apple Inc., No. 20-15241 (9th Cir. July 13, 2021), the United States Court of Appeals for the Ninth Circuit affirmed summary judgment for Apple and ordered cancellation of Social Tech’s federal registration for the mark MEMOJI. Reviewing the record from the Northern District of California (No. 3:18-cv-05945), the panel — Circuit Judges Michael D. Hawkins and Eric D. Miller, joined by Judge Jane A. Restani of the Court of International Trade, sitting by designation — held that a trademark applicant who scrambles to push a half-finished product to market for the express purpose of manufacturing litigation leverage has not made the “bona fide use” of a mark “in the ordinary course of trade” that the Lanham Act requires. The decision is a clean, modern restatement of a principle that long predates emoji: priority belongs to the party who actually uses a mark to sell something, not to the party who races to the patent-and-trademark filing window and treats a registration as a lottery ticket.

At a glance

  • Case: Social Technologies LLC v. Apple Inc., No. 20-15241 (9th Cir. July 13, 2021), aff’g No. 3:18-cv-05945 (N.D. Cal.).
  • Holding: Mere adoption of a mark, coupled with token activity intended to reserve rights for the future, is not “use in commerce” under the Lanham Act; Social Tech failed to raise a triable issue of bona fide use, so its registration (Reg. No. 5,566,242) was invalid and properly cancelled.
  • Why it matters: The court treats the purpose and genuineness of a market launch — not merely the fact of a launch — as the touchstone of bona fide use, and it is unusually candid in relying on internal communications revealing a litigation-first motive.
  • Posture: Cross-claims for declaratory relief and cancellation; summary judgment for Apple affirmed on the use-in-commerce question.

The timeline tells the story

The facts read almost as a teaching hypothetical, and the chronology does most of the analytical work. Social Tech filed an intent-to-use (ITU) application for MEMOJI in April 2016, covering mobile-application software. An ITU application is a legitimate device — it lets a business secure a constructive priority date before launch — but it is a promise, not a right. The applicant must follow through with actual use and a statement of use before a registration issues, and the underlying use must itself be bona fide.

For roughly two years, Social Tech did comparatively little. It built a promotional website, pitched investors without success, and, by its own internal account, had not begun the engineering work needed to ship a functioning product. Then the landscape shifted: on June 4, 2018, Apple announced that it had acquired rights in MEMOJI from a third party and would launch its own Memoji feature. Within weeks Social Tech rushed an app onto the Google Play Store — on June 28, 2018 — and filed its statement of use shortly after, on June 30. The registration issued in September 2018, days after Apple’s iOS 12 release brought Memoji to a global user base.

What turned a sympathetic small-developer narrative into a losing one was Social Tech’s own paper trail. Internal communications, quoted by the court, described the company “lining up all of our information, in preparation for a nice lawsuit against Apple, Inc.,” and framed the app release as a step taken “for the lawsuit.” Those statements were fatal. They allowed the panel to characterize the June 2018 launch not as the culmination of genuine commercial effort but as a litigation prop — a sprint to generate a paper record of “use” precisely because Apple had appeared on the horizon.

What “bona fide use in commerce” actually requires

The Lanham Act defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. That phrasing is not accidental. Congress added it in the 1988 Trademark Law Revision Act to kill off the old practice of “token use” — the shipment of a token quantity of goods to a friendly recipient, executed for no reason except to manufacture a basis for registration. The statutory definition demands genuineness: a transaction that a business would undertake for ordinary commercial reasons, judged in the context of the relevant industry, rather than a transaction staged for the lawyers.

The Ninth Circuit applied that standard at the level of purpose, not merely form. Social Tech had, in a literal sense, sold or distributed an app under the MEMOJI name. But the court looked through the formal act to ask why it occurred. The record showed an extended period of near-dormancy, a launch triggered by — and contemporaneous with — Apple’s competing announcement, a product riddled with bugs, and contemporaneous admissions tying the release to anticipated litigation. On that record, no reasonable jury could find that the June 2018 release reflected use “in the ordinary course of trade” rather than use “made merely to reserve a right in [the] mark.”

The decision thus reinforces a quiet but important point about how courts assess use in commerce: timing and motive are evidence. A market entry that is plausible and unhurried in isolation can become legally suspect when it materializes the instant a larger rival surfaces, especially where the applicant’s own files describe the launch in litigation terms. The same act — shipping an app — can be bona fide use for one company and token use for another, depending on the surrounding commercial reality.

Specimens and statements of use are not a safe harbor

It is worth dwelling on what did not save Social Tech: a duly issued federal registration. Social Tech filed a statement of use, submitted specimens, and obtained a registration certificate. Yet none of that insulated the mark, because a registration is only as good as the use that supports it. Where the underlying use is not bona fide, the registration is vulnerable to cancellation, and a federal court adjudicating an infringement suit can order that cancellation as part of the judgment. Apple obtained exactly that relief here as to Reg. No. 5,566,242.

For practitioners, the lesson is that the PTO’s acceptance of a specimen is not a merits ruling on bona fide use. The examining attorney generally takes the applicant’s averment of use at face value; the genuineness of that use is tested adversarially, if at all, in opposition, cancellation, or — as here — district-court litigation. A clean prosecution history offers little protection when the commercial record behind it is thin and the motive is documented.

Open questions

The opinion resolves the case on its striking facts and leaves several edges undefined. How buggy is too buggy? The court noted the app’s defects, but it did not hold that an imperfect product can never anchor bona fide use — early software is routinely shipped with bugs. The defects mattered as corroboration of a pretextual launch, not as an independent disqualifier. Likewise, the court did not draw a bright line on timing: it did not say that launching after a competitor’s announcement is per se token use. The decisive ingredient was the documented litigation purpose. Absent the “nice lawsuit” emails, a reactive-but-genuine market entry could plausibly survive summary judgment. Finally, the opinion does not deeply engage analogous-use or pre-sale “use analogous to trademark use” theories that sometimes extend priority based on advertising and promotion; Social Tech’s promotional website and investor pitches were too sparse and source-disconnected to put that doctrine seriously in play.

Implications

  • Use it from day one — and document why. Build a contemporaneous record of ordinary-course commercial activity (development milestones, marketing, sales) so a later launch reads as the natural endpoint of a real business, not a litigation maneuver.
  • Mind the paper trail. Internal messages framing a product launch as ammunition for a suit can convert otherwise-defensible use into token use. Counsel should sensitize founders to how litigation-flavored language reads in discovery.
  • An ITU filing reserves a priority date, not a right. Follow through promptly with genuine use; long dormancy followed by a competitor-triggered sprint invites a bona-fide-use challenge.
  • A registration is not a fortress. Specimens accepted by the PTO do not establish bona fide use; the underlying use can be attacked and a registration cancelled in district court.
  • Timing and motive are evidence. The same shipment can be bona fide use or token use depending on commercial context — courts will look through the form of a transaction to its purpose.

Frequently asked questions

Did Social Tech lose because it filed an intent-to-use application? No. ITU applications are entirely legitimate and confer a constructive priority date. Social Tech lost because it never converted that filing into genuine, bona fide use in the ordinary course of trade — and because its eventual launch appeared designed to reserve rights and set up litigation rather than to sell a real product.

Does shipping a real, downloadable app always count as use in commerce? Not automatically. The Lanham Act asks whether the use was bona fide and in the ordinary course of trade, not merely whether a transaction occurred. A launch staged to manufacture rights — especially one timed to a competitor and described internally in litigation terms — can be deemed token use despite a genuine download or sale.

Can a court cancel a registered trademark in an infringement suit? Yes. A federal court has authority to order cancellation of a registration as part of its judgment. Here the Ninth Circuit affirmed cancellation of Social Tech’s MEMOJI registration because the use supporting it was not bona fide.

Authorities and sources