While Gen-Z and millennials are arguing about the supposed death of the laugh-cry emoji, German company Emoji Company GmbH and toy conglomerate Mattel, Inc. are battling over the registration, use, and distinctiveness of the EMOJI mark in multiple venues, including the Trademark Trial and Appeal Board, a German court, and, most recently, a federal California court. Below is a timeline of their ongoing trademark dispute, which continues to gain momentum.
The Calm Before the Storm – Federal Trademark Applications for UNO EMOJI and EMOJI STYLE
It all started with a federal trademark application based on intent to use UNO EMOJI for card games, filed by Mattel on April 18, 2016. The U.S. Patent and Trademark Office preliminarily refused registration of the mark on the basis of likelihood of confusion with Emoji Company’s prior registered EMOJI mark for card games and dolls (among other goods). However, Mattel overcame the refusal by arguing that its mark contains the famous and highly distinctive mark UNO and that “EMOJI is a commonly used term for icons or images used to express an emotion without the use of word.”
On June 14, 2016, Mattel filed a federal application for another EMOJI-formative mark, namely, an application based on use of EMOJI STYLE for dolls. Similar to the UNO EMOJI mark, EMOJI STYLE was refused registration due to likelihood of confusion with the same registered EMOJI mark, referenced above. Mattel submitted counterarguments, one of which being that the shared term, EMOJI, is descriptive or generic. Unpersuaded, the USPTO maintained its likelihood of confusion refusal. Interestingly, this refusal came after a descriptiveness refusal that Mattel overcame by arguing that EMOJI STYLE is not descriptive and “may be suggestive of a type of play patter.” Examination of the application for EMOJI STYLE has been suspended, in light of a cancellation proceeding against Emoji Company’s EMOJI registration (further discussed below).
A Hurricane of Lawsuits – Cancellation, Opposition, and Preliminary Injunction
On April 21, 2020, the USPTO published Mattel’s UNO EMOJI application for opposition purposes. Soon after, Emoji Company obtained a 90-day extension of time to oppose. During this extended period, the company sent Mattel a proposal to enter into negotiations for a license agreement. Instead of agreeing to a license, on July 6th (after the EMOJI STYLE application encountered a likelihood of confusion refusal), Mattel filed a petition with the TTAB to cancel one of Emoji Company’s registrations for EMOJI (covering mats, rugs, and film production and rental services).
Emoji Company filed an answer on August 17th to the petition for cancellation. A few days later, it opposed Mattel’s UNO EMOJI application on grounds of likelihood of confusion and dilution, citing three of its EMOJI registrations. Then, in September, Emoji Company sought to enjoin Mattel from using EMOJI STYLE in connection with dolls in Germany. Despite Mattel’s argument that EMOJI STYLE was merely descriptive, a German court issued a preliminary injunction, finding that consumers would assume Mattel’s EMOJI STYLE products to be associated with Emoji Company.
Back in the U.S., on September 28th, Mattel submitted an answer to Emoji Company’s opposition and, as a counterclaim, petitioned to cancel the registrations cited in the opposition. In December, Mattel filed a petition to cancel another one of Emoji Company’s EMOJI registrations, making it the entity’s fifth registration to be subject to cancellation. Mattel’s grounds for cancellation for all five registrations are the same—abandonment, failure to function as a mark, mere descriptiveness, and lack of bona fide intent to use.
Last week, in what appears to be a response to the cancellation proceedings and “to prevent Mattel from having its cake and eating it too,” Emoji Company filed a complaint in the U.S. District Court for the Central District of California, claiming that Mattel’s use of EMOJI STYLE constitutes trademark infringement. It requested, among other types of relief, an order to refuse registration of EMOJI STYLE, as well as a declaration that its own EMOJI registrations are valid.
The Point of No Return?
The trademark dispute between Emoji Company and Mattel does not seem to be slowing down anytime soon. What started as two simple trademark applications snowballed into a multi-jurisdiction battle of rights. A lot is at stake for both parties, with Emoji Company likely having more to lose. If Emoji Company wins in the proceedings, Mattel will need to abandon its EMOJI STYLE and UNO EMOJI marks. Alternatively, if Emoji Company loses, its registrations will become cancelled. Even worse, its primary brand, EMOJI, might be viewed by the TTAB and USPTO as descriptive or generic, at least with respect to the products covered by its registrations. It remains to be seen whether these two entities can backtrack to a place of amicable negotiations for a license or coexistence agreement.