Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1119263

Filing date: 03/09/2021

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91264338

Party Plaintiffemoji company GmbH

CorrespondenceAddress

MARIJAN STEPHAN HUCKEHUCKE & SCHUBERT1732 1ST #27500NEW YORK, NY 10128UNITED STATESPrimary Email: m.hucke@huckelaw.comSecondary Email(s): e.sal@huckelaw.com646-396-0410

Submission Motion to Suspend for Civil Action

Filer's Name Marijan Stephan Hucke

Filer's email m.hucke@huckelaw.com, e.sal@huckelaw.com

Signature /MARIJAN HUCKE/

Date 03/09/2021

Attachments 2021-03-09 motion to suspend.pdf(170106 bytes )EXHIBIT 1.pdf(328639 bytes )EXHIBIT 2.pdf(6232726 bytes )

1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE

TRADEMARK TRIAL AND APPEAL BOARD

........................................................................

emoji company GmbH,

Opposer,

v. Opposition No.: 91-264338

Mattel, Inc.,

Applicant.

........................................................................

Mattel, Inc.,

Petitioner,

v. Cancellation No.: 92-074645

Cancellation No.: 92-075957

emoji company GmbH,

Registrant.

........................................................................

Trademark Trial and Appeal Board

U.S. Patent and Trademark Office

P.O. Box 1451

Alexandria, VA 22313-1451

NOTICE OF PENDING ACTION AND MOTION TO SUSPEND THE PROCEEDINGS

Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Opposer and Registrant, emoji company

GmbH, (“emoji”), hereby moves the Trademark Trial and Appeal Board (the “T.T.A.B.” or the “Board”) to

suspend these proceedings until the final determination of emoji company GmbH v. Mattel, Inc., Civil

2

Action No. 2:21-cv-01931 (“Civil Action”), because the Civil Action will have a direct bearing on the

instant proceedings.

FACTUAL BACKGROUND: emoji v. Mattel

On July 6, 2020, Mattel filed a petition to cancel emoji’s Registration No. 4766492 for the mark

EMOJI in standard characters for goods and services in International Classes 27 and 41, Cancellation No.

92074645 (the `645 Cancellation). On August 19, 2020 emoji filed a notice of opposition against Mattel’s

application Serial No. 87005050 for the mark UNO EMOJI in standard characters for goods in International

Class 28, Opposition No. 91264338 (the `338 Opposition). Mattel answered the notice of opposition on

September 28, 2020 and asserted counterclaims for cancellation of Registration Nos. 5343650, 5700040,

and 5778247 for the mark EMOJI in standard characters, for goods and services in International Classes 9,

14, 20, 24, and 28. On December 11, 2020, Mattel filed a petition to cancel emoji’s Registration No.

4868832 for the mark EMOJI in standard characters for goods in International Classes 3, 16, 17, 18, 21, 22,

25, 26, 27, 29, 30, and 32.

The ‘645 Cancellation, the `957 Cancellation, and the `338 Opposition have been consolidated by

the Board with order from February 2, 2021. The Board found that these involve the same parties represented

by the same counsel, the same mark, nearly identical claims and the same affirmative defenses.

On February 16, 2021, Mattel filed a response to Office Action issued by the Examining Attorney

refusing to register Mattel’s application with Serial No. 87070972 for the mark EMOJI STYLE under

Section 2(d) of the Lanham Act on the grounds of a likelihood of confusion with emoji’s Registration Nos.

5778247 and 5343650. In its response Mattel requested to suspend further examination of the EMOJI

STYLE application pending the Board’s disposition of Mattel’s counterclaim in the `338 Opposition.

(Attached hereto as Exhibit 1)

On March 2, 2021, emoji filed a Complaint with the District Court for the Central District of

California seeking an order inter alia enjoining Mattel from the identical or confusingly similar use of its

3

registered emoji ® Marks, refusal of Mattel’s EMOJI STYLE mark and dismissal of Mattel’s petition for

cancellations of emoji company’s emoji ® registrations, alleging trademark infringement, unfair

competition, accounting and related state law claims. (Attached hereto as Exhibit 2).

ARGUMENT

The Determinations in emoji company GmbH v. Mattel, Inc. Will Have a Direct Bearing on the Issues

Before the Board

Where a party to a case pending before the Board is also involved in a civil action that may have a

bearing on the T.T.A.B. matter, the Board may suspend the proceeding until the final determination of the

civil action. 37 C.F.R. § 2.117(a); TBMP § 510.02(a). It is the policy of the Trademark Board to stay

administrative proceedings pending the outcome of court litigation between the same parties involving

related issues. The civil action does not have to be dispositive of Board proceedings, but only needs to have

a bearing on issues before the Board (New Orleans La. Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550,

1552 (TTAB 2011)) J. Thomas McCarthy, 6 McCarthy on Trademarks and Unfair Competition § 32:47

(5th ed. updated March 2021).

Mattel and emoji are both parties to the Civil Action, which is currently pending before the District

Court for the Central District of California, involving essentially related issues as are raised in the instant

proceedings. In that case, the District Court will determine the rights of emoji and Mattel with respect to the

emoji mark and Mattel’s petition for cancellations of emoji company’s emoji ® registrations be dismissed.

Specifically, emoji has filed a complaint alleging trademark infringement, and related federal and state

trademark claims in connection with Mattel’s sale of toys and playthings bearing the emoji mark. Among

the issues presented in Opposer’s trademark civil action are two issues identical to the subjects of these

consolidated proceedings: (1) Opposer’s right to continued registration of the emoji mark, and (2) Opposer’s

objection to Mattel’s attempt to register and use the emoji mark. It is clear that this determination will

directly affect the resolution of the issues before the Board. See, The Other Telephone Company v.

4

Connecticut National Telephone Company, Inc., 181 U.S.P.Q. 125, 1974 WL 19878 (T.T.A.B. 1974)

(decision in civil action for infringement and unfair competition would have bearing on outcome of

Trademark Act § 2(d) claim before Board).

Based on the foregoing, in the interest of judicial economy to avoid duplication efforts and avoid

the probability of reaching inconsistent conclusions, emoji respectfully requests its motion to suspend under

Trademark Rule 2.117(a) and TBMP § 510 be granted.

DATED: March 9, 2021

Respectfully submitted,

Hucke & Schubert

By: /Marijan Hucke/

Marijan Stephan Hucke

1732 1st Ave, Ste 2500

New York, NY 10028

646-396-0410

ATTORNEYS FOR APPLICANT,

emoji company GmbH

CERTIFICATE OF ELECTRONIC TRANSMISSION

I hereby certify that this MOTION TO SUSPEND THE PROCEEDINGS is being transmitted

electronically to Commissioner of Trademarks, Attn: Trademark Trial and Appeal Board through ESTTA

pursuant to 37 C.F.R. §2.195(a), on this 9th day of March, 2021.

/Marijan Hucke/

Marijan Stephan Hucke

CERTIFICATE OF SERVICE

I certify that on March 9, 2021, I caused to be served a copy of MOTION TO SUSPEND THE

PROCEEDINGS by email to pbost@sheppardmullin.com and jpietrini@sheppardmullin.com.

/Marijan Hucke/

Marijan Stephan Hucke

EXHIBIT 1

To: MATTEL, INC. (USPTO@mattel.com)

Subject: U.S. Trademark Application Serial No. 87070972 - EMOJI STYLE - N/A

Sent: August 15, 2020 11:04:02 AM

Sent As: ecom119@uspto.gov

Attachments: Attachment - 1Attachment - 2Attachment - 3

 United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 U.S. Application

Serial No.

87070972 Mark:  EMOJISTYLE 

   

Correspondence

Address: MICHAELMOOREMATTEL, INC.TWR 15-1333CONTINENTALBOULEVARDEL SEGUNDO CA90245

 

 

Applicant:  MATTEL, INC. 

  

Reference/Docket

No. N/A Correspondence

Email Address:  USPTO@mattel.com

 

  

NONFINAL OFFICE ACTION

 The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. 

Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of thisOffice action.   Issue date:  August 15, 2020

 

This Office action is in response to applicant’s communication filed on July 30, 2020.   Upon further review of the Office records, the applicantshould note the following additional refusal based on another mark owned by the same registrant as the previously cited mark.  The examiningattorney apologizes for inadvertently omitting this registration in the previous Section 2(d) refusal.  In addition to the new grounds for refusal, therefusal based upon likelihood of confusion with Reg. No. 5778247 is maintained. 

Refusal to Register-Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5343650.  TrademarkAct Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration. Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would beconfused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood ofconfusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361,177 USPQ 563, 567 (C.C.P.A. 1973) (called the “ du Pont factors”).   In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747(Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or ofsimilar weight in every case.”   In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie

Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)). Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) thesimilarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002));Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandatedby [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in themarks.”); TMEP §1207.01.   

Similarity of the Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital

Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve

Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”   In re Inn at St. John’s, LLC , 126 USPQ2d1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam , 777 F. App’x 516, 2019 BL 343921(Fed. Cir. 2019); TMEP §1207.01(b). The applicant’s mark is EMOJI STYLE.   The registered mark is EMOJI.  Incorporating the entirety of one mark within another does not obviatethe similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella

Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer designand CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A.1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWSDEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.  Theaddition of the term STYLE to the applicant’s mark does not obviate the likelihood of confusion. 

Similarity of the Goods

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am.

Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898(Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing aresuch that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”   Coach Servs., Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,1724 (TTAB 2007)); TMEP §1207.01(a)(i). The applicant’s goods are identified as dolls, doll clothing and doll accessories.   The registrant’s goods include teddy bears; soft toys, namely,soft sculpture toys, stuffed dolls and animals.  The goods are confusingly similar because the term dolls in the applicant’s identificationencompasses the more specific wording stuffed dolls in the registrant’s identification.   In view of the similarity of the marks and the goods, confusion is likely to occur. 

Applicant’s Arguments

The applicant’s arguments traversing the refusal based upon Reg. No. 5778247 have been considered carefully.   In reviewing the Office recordsfor marks containing the term “EMOJI” as referenced by the applicant, the examining attorney noted that the above reference registration wasinadvertently not cited.  The argument that confusion is not likely because the applicant’s mark also contains the term STYLE, which has been used in other Mattelmarks is noted, but is not persuasive.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or

service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692(Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of

Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OFAMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303,128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumerstypically notice those words first”).   In that the first term in the applicant’s mark is identical to the registrant’s mark in its entirety, confusion islikely to occur. Furthermore, the other “EMOJI” marks referenced by the applicant do not justify the withdrawal of the refusal.   Those marks either combineEMOJI with other wording that changes the commercial impression of the mark, or are used on unrelated goods.  For example, PEZ EMOJIS isused in connection with novelty plastic candy dispensers.  In contrast, the applicant’s mark and the registrant’s mark are used on highly similar,if not identical goods. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in supportof registration.     . How to respond.  Click to file a response to this nonfinal Office action.    

  

/Patty Evanko/Patty EvankoExamining AttorneyLaw Office 119571-272-9404patty.evanko@uspto.gov (informal questions only)  

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received bythe USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseencircumstances could affect an applicant’s ability to timely respond.  

 Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have anattorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristicapplicant.  If applicant has an attorney, the response must be signed by the attorney.

 If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

To: MATTEL, INC. (USPTO@mattel.com)

Subject: U.S. Trademark Application Serial No. 87070972 - EMOJI STYLE - N/A

Sent: August 15, 2020 11:04:04 AM

Sent As: ecom119@uspto.gov

Attachments:

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 Office Action (Official Letter) has issued

on August 15, 2020 for

U.S. Trademark Application Serial No. 87070972

 Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney hasissued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow thesteps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Patty Evanko/

Patty Evanko

Examining Attorney

Law Office 119

571-272-9404

patty.evanko@uspto.gov (informal questions only)

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of yourapplication, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center(TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 15, 2020, using the Trademark ElectronicApplication System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of theresponse period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid

missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about yourapplication.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated withthe USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices –most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”

 

 

 

EXHIBIT 2

210302 Complaint.docx 1

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

RUSS, AUGUST & KABAT Larry C. Russ, State Bar No. 082760 lruss@raklaw.com Irene Y. Lee, State Bar No. 213625 ilee@raklaw.com Nathan D. Meyer, State Bar. No. 239850 nmeyer@raklaw.com 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Telephone: (310) 826-7474 Facsimile: (310) 826-6991 Attorneys for Plaintiff Emoji Company GmbH

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

EMOJI COMPANY GMBH, a German company, Plaintiff, vs. MATTEL, INC., a Delaware Corporation and Does 1-10, inclusive, Defendants.

Case No. COMPLAINT FOR: (1) TRADEMARK INFRINGMENT; (2) UNFAIR COMPETITION UNDER CAL. B&P §17200; (3) UNFAIR COMPETITION; (4) ACCOUNTING; AND (5) DECLARATION RE: TRADEMARKS

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 1 of 16 Page ID #:1

210302 Complaint.docx 2

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

Introduction

1. Plaintiff emoji Company GmbH (“Plaintiff” or “emoji Company”)

owns a number of trademark registrations for “emoji®” in more than 100 countries,

including the United States. It is the primary licensor of emoji® trademark use

outside of the electronic keyboard space. It is also the owner of more than 25,000

copyrighted emoji® branded icons and designs. It is one of the most highly regarded

licensing companies on the planet and has generated more than $2.5 billion in

licensed sales from emoji®-branded products.

2. Defendant Mattel, notwithstanding that it has already been ordered to

stop infringing upon emoji Company’s rights by a court in Germany and that its

trademark application has been refused in the United States, is wrongfully seeking

to trade on emoji Company’s goodwill by offering dolls under the putative “EMOJI

STYLE™” mark. Emoji company brings this case to protect its rights in the federally

registered emoji® marks and prevent Mattel from expressly and knowingly trading

on the goodwill emoji Company has expended significant resources and time to

develop and cultivate for over five years.

3. In this context, the parties to this case are in agreement on one issue.

The way in which Mattel has used “EMOJI STYLE” constitutes a trademark use, as

it is intended to be source-identifying. In refuting the USPTO’s claim that “EMOJI

STYLE” is merely descriptive, Mattel affirmatively declared and represented to the

USPTO that “the mark EMOJI STYLE does not immediately conjure an ingredient,

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 2 of 16 Page ID #:2

210302 Complaint.docx 3

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

quality, characteristic, function, feature, purpose, or use of the intended products,

but rather may be suggestive of a type of play pattern.”1

4. For Mattel, the problem is that emoji Company is the senior user of the

emoji® mark in the United States, by more than two years. Mattel’s use is likely to

cause consumer confusion with Plaintiff emoji Company’s own use of the brand

“emoji” in connection with the same category of goods.

5. A court in Germany has already ruled that these uses, on identical facts,

are likely to cause confusion among German consumers and has enjoined Mattel

from selling EMOJI STYLE™ dolls in Germany. A true and correct copy of an

English translation of the decision from the Hamburg court so ruling is attached

hereto as Exhibit “A.”

6. Emoji Company now brings this case to prevent exploitation of its

goodwill in the United States.

Mattel’s EMOJI STYLE™ Application and Emoji Company’s emoji® Mark

7. Mattel has applied to register a trademark for EMOJI STYLE™ in

connection with dolls, with a claimed first use date of January 23, 2017, U.S.

Application No. 87,070,972. Tellingly, registration of its application is being refused

“because of a likelihood of confusion” with emoji Company’s mark “emoji®”: U.S.

Registration Nos. 5,778,247 and 5,343,650.

8. Notably, around the time when Mattel was contemplating the use of

“EMOJI STYLE™,” emoji Company reached out to Mattel and offered a license to

use its “emoji®” mark. Mattel declined.

9. In addition, Mattel is using the EMOJI STYLE™ mark in connection

with EMOJI STYLE Barbie, which began in January of 2017, and is doing so in

interstate commerce. A photograph of an EMOJI STLYE™ label appears

immediately below.

1 See Exhibit B.

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 3 of 16 Page ID #:3

210302 Complaint.docx 4

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

10. When the USPTO initially refused registration because the mark was

“merely descriptive,” Mattel pushed back, asserting that “the mark EMOJI STYLE

does not immediately conjure an ingredient, quality, characteristic, function, feature,

purpose, or use of the intended products, but rather may be suggestive of a type of

play pattern.” A true and correct copy of Mattel’s response is attached hereto as

Exhibit “B.”

11. After Mattel succeeded in convincing the USPTO that “EMOJI

STYLE™” was not merely descriptive, the USPTO then refused the application for

its similarity to Plaintiff’s registered “emoji®” mark, U.S. Registration Nos.

5,778,247 and 5,343,650 in connection with, among other things, dolls. True and

correct copies of Plaintiff’s trademark registration certificates for U.S. Registration

Nos. 5,778,247 and 5,343,650 are attached hereto as Exhibit “C.”

12. Notwithstanding Mattel’s arguments in this regard, the USPTO

maintained its refusal to register “EMOJI STYLE™” over emoji Company’s

registrations based upon its findings that Mattel’s “EMOJI STYLE™” was junior to

Plaintiff’s emoji registrations and likely to cause confusion with same.

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 4 of 16 Page ID #:4

210302 Complaint.docx 5

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

13. Despite this refusal, Mattel continues to sell EMOJI STYLE™ dolls in

interstate commerce (although not in Germany, where it has been enjoined), and has

now petitioned to cancel Plaintiff’s registrations and several related registrations.

Mattel’s conduct in the cancellation petitions is in bad faith, apart from the merits,

as it is seeking to cancel registrations that have no bearing on Mattel’s business at

all.

emoji Company

14. Plaintiff emoji Company GmbH (“Plaintiff” or “emoji Company”) is a

German company that owns a number of registrations for the emoji® trademark in

more than 100 countries, including the United States. It is the primary licensor icons

under the brand name emoji® and operates completely outside of the electronic

keyboard space. It is also the owner of more than 20,000 copyrighted emoji® brand

icons and designs.

15. Plaintiff, in addition to creating its own emoji®-branded products,

licenses its mark to third parties pursuant to formal license agreements, through more

than 19 license agencies and more than 950 licensees, with more than $2.5 billion in

license revenue.

16. By way of example only: Sony Pictures licensed Plaintiff’s mark in the

The Emoji Movie motion picture; and Puma and Nestle both license the emoji® mark

for emoji-branded products.

Below is a pictogram of many of the more prominent licensees of emoji

Company.

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 5 of 16 Page ID #:5

210302 Complaint.docx 6

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

17. Licensees have sold more than $2.5 billion in licensed emoji® branded

merchandise. Emoji Company was ranked no. 57 out of the top 150 global licenses

in the trade journal License Global and was ranked no. 3 in the most influential

brands by the 2017 Power List on licensing.biz (behind Lego® and Coca-Cola®).

True and correct copies of the pertinent pages from License Global 5 and Power List

are attached hereto as Exhibit “D.”

18. Emoji Company has received numerous awards and accolades for its

licensing of the emoji® mark. It received the 2018 Lima Award for Best Digital

Program in the United States and has received similar awards for other country

programs. It has also been nominated for Best Brand digital property 2019

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 6 of 16 Page ID #:6

210302 Complaint.docx 7

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

(Licensing International) and for the Lima Award for Best Digital Property in the

United States in 2018.

19. Emoji Company has been diligent in enforcing and protecting its rights

in the emoji® mark worldwide, but particularly in the United States. It has filed

dozens of lawsuits against counterfeiters in the Northern District of Illinois, resulting

in the entry of 26 temporary restraining orders, 21 preliminary injunctions, and 4

final judgment orders in its favor.

20. Emoji Company has commissioned surveys in the United Kingdom and

Germany, in which consumers recognize that emoji® can be a stand-alone brand.

21. Emoji Company displays its emoji® marks extensively on its products

and in its marketing and promotional materials. These marks have been the subject

of substantial and continuous marketing and promotion by Plaintiff at great expense.

Plaintiff’s promotional efforts include — by way of example, but not limitation —

substantial print media, a website, social media sites and point of sale materials.

22. As relevant to this case, emoji Company owns the mark “emoji” in

connection with dolls, Registration Nos. 5,778,247 (the “’247 Mark”) and 5,343,650

(the “’650 Mark”), with an effective priority date of August 15, 2014.

23. Below are examples of licensed emoji® branded products using the ’247

and ’650 Mark:

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 7 of 16 Page ID #:7

210302 Complaint.docx 8

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

Mattel’s Use and Its Application to Register “Emoji Style™”

24. Mattel is one of the world’s largest toy companies and is itself no

stranger to intellectual property litigation.

25. Unlike the many similarly-situated companies who license the emoji®

mark when seeking to use the term in the trademark sense, Mattel not only created

an “EMOJI STYLE™” Barbie without seeking or securing the consent of Plaintiff,

but it also applied to register “EMOJI STYLE” as its own trademark. In doing so,

Mattel asserted that “EMOJI STYLE” was suggestive and thus trademarkable on

Principal Register even over the objection of the USPTO, which originally

concluded the mark was merely descriptive.

26. As Mattel admitted, its use of “EMOJI STYLE” is not descriptive. It is

not simply describing its product as bearing emoji. Instead, it is branding its Barbie

dolls as “EMOJI STYLE™.” It is utilizing an attention-seeking ™ symbol next to its

“EMOJI STYLE” mark, imparting that “EMOJI STYLE” is its trademark. This use

is deliberately source-designating, seeks to trade on the goodwill created by emoji

Company as a mark.

27. Mattel’s use, in particular, is likely to cause consumer confusion as to

the source, affiliation, or endorsement of “EMOJI STYLE,” especially where, as

here, the wording bears the “TM” symbol, signifying it being a trademark.

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 8 of 16 Page ID #:8

210302 Complaint.docx 9

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

The German Court Bans Sale of EMOJI STYLE™ Barbie as Likely to Cause

Confusion With Emoji®

28. This is the second court proceeding concerning EMOJI STYLE™

Barbie. A court in Germany has already issued a preliminary injunction against sale

of the dolls in Germany, and a full explanation of German proceedings is described

below.

29. Mattel, through one of its subsidiaries, began distributing “EMOJI

STYLE™” Barbie in Germany. In September of 2020, emoji Company sought a

restraining order in light of its senior “emoji®” mark in Germany. Mattel defended,

arguing that its use of the term “EMOJI STYLE™” was merely descriptive,

notwithstanding the “TM” symbol accompanying “EMOJI STYLE.”

30. The German Court rejected Mattel’s argument, stating that:

“In view of the sole distinctive element ‘Emoji’ in the name ‘Emoji

Style’, these are – notwithstanding the other language formulations –

marks with a high degree of similarity on highly similar products,

namely toys. The element ‘TM’ superscripted behind the name ‘Emoji

Style’ will be understood by consumers, the market being targeted, as

an indication of the origin in the Defendant as supplier of the disputed

Barbie doll. Similarly, the ‘R’ or a ‘Reg’ superscripted in a circle

behind a name will be understood by the target groups namely as a

statement of trademark protection and thus also an indication of the

origin from a particular company, in this case the owner of the mark

‘Emoji Style’ or ‘Emoji’ as distinguishing element of the name. Such

use of the sign by the Defendant for offering its own goods impairs the

function of the Plaintiff’s Trademark to indicate the origins of the thus

identified products and in this way poses a risk of confusion in the sense

of Article 9 (2) lit. b EUTR. In view of this use of on the Defendant’s

product indicating its origin, the market being targeted will assume that

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 9 of 16 Page ID #:9

210302 Complaint.docx 10

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

the product is the result of a collaboration between the Defendant and

the Plaintiff as owner of the Plaintiff’s Trademark, i.e. some kind of

commercial link between the two companies – whether a licensing or

cooperation in the design – regarding the Barbie doll in dispute.”

Simply put, Mattel was not permitted to argue that its trademark, “EMOJI STYLE™”

was not source identifying.

31. Mattel has since filed an application to cancel emoji Company’s

“emoji®” registrations. But, Mattel cannot have it both ways. It is effectively arguing

that on the one hand, “EMOJI STYLE™” is source identifying but “emoji®” is not.

Emoji Company is filing this complaint to prevent Mattel from having its cake and

eating it too.

Parties

32. Plaintiff emoji company GmbH (“Plaintiff” or “emoji Company”) is a

German company with its principal place of business in Hamburg, Germany.

Plaintiff is the owner of the ’247 and ’650 Marks, in addition to other emoji-

formative trademark registrations.

33. Defendant Mattel, Inc. (“Mattel”) is a Delaware corporation with its

principal place of business in the County of Los Angeles, State of California, at 333

Continental Boulevard in El Segundo.

34. Plaintiff and Defendant both offer toys and dolls for sale in interstate

commerce, either directly or through licensees.

Jurisdiction and Venue

35. This is an action for registered trademark infringement in violation of

§§32 and 43(a) of the Lanham Act, 15 U.S.C. §§1114 and 1125(a), and unfair

competition under California state law, which activities have occurred in this district

and elsewhere in interstate commerce within the United States.

36. This court has jurisdiction pursuant to §§ 37 and 39 of the Lanham Act,

15 U.S.C. §§1119 and 1121, 28 U.S.C. §1331 and §§1338(a) and (b). This court has

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 10 of 16 Page ID #:10

210302 Complaint.docx 11

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

jurisdiction over claims in this complaint that arise under California state law

pursuant to 28 U.S.C. §1367 as the California state law claims are so related to the

federal claims that they form part of the same case or controversy and derive from a

common nucleus of operative fact.

37. Defendant is subject to personal jurisdiction in this district and court

because Defendant resides, is headquartered in, conducts business in and/or

conducted a substantial part of, if not all of, its infringing and violating conduct in

this district.

38. Venue in this district and court is proper pursuant to 28 U.S.C. §1391

because, Defendant is headquartered in, conducts business in and/or conducted a

substantial part of, if not all of, its infringing and violating conduct in this district

and because all parties are subject to personal jurisdiction and venue in this district

and court.

First Claim for Relief: Trademark Infringement

39. Plaintiff repeats the allegations of paragraphs 1-38, supra, and

incorporates them by reference as if herein set forth in their entirety.

40. From 2015, emoji Company’s federally registered emoji® mark has

been in use in interstate commerce in connection with dolls and toys to identify the

source of its goods and to distinguish it from others by prominently displaying the

emoji® trademark in connection with its goods.

41. Defendant’s infringing uses, including without limitation sale of dolls

under the EMOJI STYLE™ mark (“Defendant’s Infringing Uses”), are in imitation,

infringement and violation of Plaintiff’s federally registered emoji® mark and

intended to steal and trade on the goodwill created by Plaintiff.

42. Defendant has, without permission, willfully and with the intention of

benefiting from the reputation and goodwill in the mark, offered goods under

Defendant’s Infringing Uses, including without limitation “EMOJI STYLE™.”

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 11 of 16 Page ID #:11

210302 Complaint.docx 12

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

43. There is a substantial likelihood of confusion on the part of the public

and consumers regarding the use of the ’247 and ’650 Marks by Defendant.

44. Defendant’s conduct and Defendant’s Infringing Uses constitute

trademark infringement in violation of §43(a) of the Lanham Act (15 U.S.C.

§1125(a)) and §32 of the Lanham Act (15 U.S.C. §1114), which prohibit the use in

commerce in connection with the sale of goods or rendering of any services of any

word, term, name, symbol or device, or any combination thereof, that is likely to

cause confusion, or to cause mistake, or to deceive as to the source of the goods or

services.

45. As a direct and proximate result of Defendant’s intentional, willful and

wanton conduct and Defendant’s Infringing Uses, Plaintiff has been injured and will

continue to suffer damages as well as irreparable harm and injury to its business,

reputation and goodwill unless Defendant is restrained from infringing Plaintiff’s

’247 and ’650 Marks, including without limitation being restrained from engaging

in Defendant’s Infringing Uses.

46. Plaintiff has no full, complete and adequate remedy at law and is

entitled to injunctive relief pursuant to 15 U.S.C. §§1114 and 1116(d).

47. Plaintiff is entitled to recover actual damages and Defendant’s profits

pursuant to 15 U.S.C. §1117(a); treble damages pursuant to 15 U.S.C. §1117(a) and

(b); attorney’s fees and costs pursuant to 15 U.S.C. §1117(a); seizure of all infringing

goods pursuant to 15 U.S.C. §1116(d); and impoundment and destruction of all

infringing goods pursuant to 15 U.S.C. §1118.

Second Claim for Relief: Unfair Competition Under California Business &

Professions Code §§17200 Et Seq.

48. Plaintiff repeats the allegations of paragraphs 1-47, supra, and

incorporates them by reference as if herein set forth in their entirety.

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 12 of 16 Page ID #:12

210302 Complaint.docx 13

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

49. Defendant’s acts and conduct constitute unfair competition and

misappropriation of Plaintiff’s trademark and related rights in violation of California

Business & Professions Code §§17200 et seq.

50. Defendant misappropriated, including in bad faith, the labors and

expenditures of Plaintiff and its predecessors.

51. As a direct and proximate result of Defendant’s unlawful, unfair and/or

fraudulent business practices including without limitation Defendant’s Infringing

Uses, Plaintiff has suffered, and will continue to suffer, irreparable harm and injury.

52. Plaintiff has no full, complete and adequate remedy at law, and

Defendant’s conduct has caused and will continue to cause irreparable harm and

injury to Plaintiff’s business, reputation and goodwill.

53. Plaintiff is entitled to an injunction prohibiting Defendant from

continuing its actionable misconduct including without limitation Defendant’s

Infringing Uses, and Plaintiff is entitled to restitution of all amounts acquired by

Defendant by means of such wrongful act.

Third Claim for Relief: Common Law Unfair Competition

54. Plaintiff repeats the allegations of paragraphs 1-53, supra, and

incorporates them by reference as if herein set forth in their entirety.

55. Defendant’s actionable misconduct is intended to and/or likely to cause

confusion, misrepresentation, mistake and/or deceive the public and customers as to

the affiliation, approval, sponsorship, or connection between Plaintiff and

Defendant, and therefore constitutes common law unfair competition under

California law.

56. Plaintiff has been damaged and will continue to be damaged by

Defendant’s actionable misconduct.

57. Defendant’s actionable misconduct is causing and will continue to

cause Plaintiff to suffer irreparable harm and injury and, unless Defendant is

restrained from so acting including Defendant’s Infringing Uses, Plaintiff will

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 13 of 16 Page ID #:13

210302 Complaint.docx 14

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

continue to be so damaged because it has no full, complete and adequate remedy at

law.

58. Accordingly, Plaintiff respectfully requests that Defendant be enjoined

from continuing its actionable misconduct including without limitation Defendant’s

Infringing Uses, and that Plaintiff be awarded damages in an amount to be

determined at trial.

59. Plaintiff is informed, believes and based thereon alleges that

Defendant’s conduct was willful, wanton malicious and in conscious disregard of

Plaintiff’s rights, justifying an award of punitive and/or exemplary damages in an

amount to be proven at trial.

Fourth Claim for Relief: Accounting

60. Plaintiff repeats the allegations of paragraphs 1-59, supra, and

incorporates them by reference as if herein set forth in their entirety.

61. Plaintiff is informed, believes and based thereon alleges that Defendant

has acquired significant gains, profits and advantages as a direct result of

misappropriating the emoji® Marks for a period unknown to Plaintiff.

62. Accordingly, Plaintiff respectfully requests an accounting of all of

Defendant’s gains, profits, and advantages from its trademark infringement and

unfair competition, including with limitation Defendant’s Infringing Uses, for a

period of at least five years.

Fifth Claim for Relief: Declaration regarding Registrations and Applications

63. Plaintiff repeats the allegations of paragraphs 1-62, supra, and

incorporates them by reference as if herein set forth in their entirety.

64. Currently pending before the Trademark Trial and Appeal Board are

three proceedings, which have been consolidated, (1) Plaintiff’s opposition no.

91,264,338, (2) Defendant’s Cancellation no. 92,074,645, and (3) Defendant’s

Cancellation no. 92,075,957, which include, inter alia, a petition for cancellation of

Plaintiff’s ’247 and ’650 Marks.

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 14 of 16 Page ID #:14

210302 Complaint.docx 15

COMPLAINT

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

RU

SS, A

UG

US

T &

KA

BA

T

65. Pursuant to 15 U.S.C. §1119, Plaintiff is entitled to a declaration and

order directing that the ’247 and ’650 Marks are valid and Mattel’s cancellation

petitions be dismissed.

Prayer for Relief

Wherefore, Plaintiff prays for relief and judgment against Defendant as

follows:

1. An order enjoining Defendant from engaging in, offering and/or

providing goods or services in connection with any name or art or dress identical to

or confusingly similar to Plaintiff’s emoji® Marks, including without limitation

Defendant’s Infringing Uses;

2. For an accounting to be performed to identify Defendant’s actual gains,

profits and advantages from its trademark infringement and unfair competition,

including with limitation Defendant’s Infringing Uses, for a period of five years;

3. For an award of Defendant’s gains, profits, and advantages derived

from its trademark infringement and unfair competition, including without limitation

Defendant’s Infringing Uses;

4. For treble damages pursuant to 15 U.S.C. §§1117(a) and (b);

5. For an order that registration of Mattel’s EMOJI STYLE™ application

be refused and that Mattel’s petition for cancellations of emoji Company’s emoji®

registrations be dismissed pursuant to 15 U.S.C. §1119;

6. For punitive damages;

7. Declaring this to be an exceptional case within the meaning of 15

U.S.C. §1117;

8. For Plaintiff’s expenses and attorney’s fees pursuant to 15 U.S.C.

§1117(a); and

9. For such other relief as the court deems just, equitable and proper.

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 15 of 16 Page ID #:15

Case 2:21-cv-01931 Document 1 Filed 03/02/21 Page 16 of 16 Page ID #:16

EXHIBIT A

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 1 of 10 Page ID #:17

Landgericht Hamburg

File No.: 327 O 299/20

Pronounced on 3 December 2020

Klonowski, Clerk of the Court, as

certifying officer of the record office

– Translation from the German, 9 pages –

Copy

Judgement

IN THE NAME OF THE PEOPLE

In the lawsuit

emoji company GmbH, represented by its managing shareholder Marco Hüsges, Mittelweg

125c, 20148 Hamburg

– the Plaintiff –

Legal representative:

Rechtsanwälte Hucke & Schubert, Waidmarkt 11, 50676 Köln

versus

Mattel Europe BV, represented by its Directeurs (directors) René van den Polder, Mandana

Sadigh Esfandiari and Bhrijesh Jayant Patel, Gondel 1, 2e etage, 1186MJ Amstelveen,

Netherlands

– the Defendant –

Legal representative:

Rechtsanwälte Lorenz, Seidler, Gossel, Widenmayerstraße 23, 80538 München

Landgericht (Regional Court) Hamburg - Civil Division 27 – acting through the Presiding

Regional Court Judge Ms. Zöllner, Regional Court Judge Dr. Illmer and Judge Dr. Gleim on the

basis of the oral hearing of 3 December 2020 ruled as follows:

1. By way of interlocutory injunction, the Defendant is sentenced on pain of a fine for

each case of infringement, the amount to be determined by the court - or, if the fine

cannot be collected, a custodial sentence, or a custodial sentence of up to six

months, with the custodial sentence being imposed on its directors (the fine in each

case being a maximum of EUR 250,000.- and the custodial sentence in total for a

maximum of two years)

to cease and desist

from advertising, offering and/or distributing in the course of trade in the territory of the

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 2 of 10 Page ID #:18

Federal Republic of Germany toys, in particular dolls, with “EMOJI STYLE TM“

,

especially as illustrated below:

and/or to allow such acts to be carried out by any third party, especially licensees.

2. The petition for issue of an interlocutory injunction is otherwise rejected.

3. The Plaintiff shall bear 10 % and the Defendant 90 % of the costs.

4. The Plaintiff may avoid enforcement by providing a bond or depositing 110 % of the

amount enforceable on the basis of the judgment, unless the Defendant provides

before enforcement security equivalent to 110 % of the relevant enforceable

amount.

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 3 of 10 Page ID #:19

Facts of the case

The Plaintiff is seeking restraint and information from the Defendant regarding the infringement

of several EU trademarks EMOJI by the sale and advertising of the Barbie doll figure illustrated

in the ruling for item 1).

The Plaintiff is a German merchandising company and owner of various EU trademarks relating

to the name “emoji” and which is registered for numerous goods and services. It licenses these

trademarks globally. In the present lawsuit it is based primarily on the EU word mark EM

013098348 “emoji” with priority of 21 July 2014, and on a subordinate level on EU trademark EM

017941993 “emoji” with priority of 15 August 2014, subordinate to that on EU trademark EM

018296557 “emoji THE ICONIC BRAND” with priority of 2 May 2017 and subordinate to that on

EU trademark EM 017943017 “emoji” with priority of 9 August 2013. All the said trademarks have

protection inter alia for toys, including and expressly for dolls.

The Defendant is the Dutch subsidiary of the Mattel business group, which is responsible for

selling the products in the EU.

The doll in dispute could be ordered in September 2020 on the platform www.amazon.de in

Germany and in the course of a test order was also delivered to a German address from an

Austrian dealer using amazon as marketplace. It could at this point in time also be ordered

through amazon.de from a marketplace provider (Kinado) domiciled in Germany. For further

details, reference is made to exhibits AS 8 and AS 9, in particular the respective pages 1.

The Plaintiff issued a warning to the Defendant with its letter of 10 September 2020 and requested

issue of a restraint-obligation declaration by 17 September 2020. For further details and the

Barbie doll being referred to, reference is made to Exhibit AS 6. After the claim was rejected and

the requested declaration had not been issued, the Plaintiff filed on 27 September 2020 the

petition for issue of an interlocutory injunction that is the subject of this dispute.

The Plaintiff is of the opinion that it has a cease and desist claim on the basis of its EU

trademarks as its “emoji” trademarks have at least an average distinguishing power and the

Defendant uses a name identical to the marks for identical, or at any rate very similar goods in

goods class 28. The Defendant thereby uses the name as a trademark. This can be seen in

particular from the fact that the “Emoji” add-on is provided with a TM symbol, which is

understood in the market as an indication of origin. The market will in this regard interpret this

appearance as an example of co-branding indicating origin by two companies that are in some

way associated with each other, at any rate regarding the Barbie in dispute. This is all the more

true as the Defendant regularly uses its Barbie” mark in conjunction with third-party marks. This

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 4 of 10 Page ID #:20

is also not undermined by the fact that the Defendant uses the composite term “emoji style”. The

designation does not through this become descriptive, but remains an indication of origin. The

Defendant also argues thus in its trademark registration of “emoji style” in the USA and only in

this way can it be explained why the Defendant uses the add-on “TM” behind the words “emoji

style” on the Barbie package. The risk of repeat infringement required for a cease and desist

claim will obtain as long as the Defendant has not issued the penalty-based declaration of cease

and desist and obligation requested by the Plaintiff.

Regarding the matter of urgency, the Plaintiff states that it learned of the Barbie in dispute being

offered in the market only accidentally on 1 September 2020. Also in the light of previous

disputes between the parties relating to other products of the Defendant and the “emoji” mark,

the Plaintiff is also not subject to any market monitoring obligation.

The Plaintiff rejects the defense of non-use by demonstrating its wide-ranging use of the Emoji

trademarks, supported by a file of exhibits, as well as official attorney statements by its legal

representatives regarding use of the sign.

The Plaintiff petitions,

1. as ruled by the court;

2. that the Defendant be ordered to issue to the Plaintiff information

regarding sale of the products referred to under number 1 in the territory

of the Federal Republic of Germany, while indicating in particular the

names and addresses of the licensees and/or sub-licensees,

manufacturers, suppliers, importers, dealers and commercial customers

and the quantities of goods manufactured, ordered, received or delivered

and their purchase and sales prices.

The Defendant petitions

that the petition for issue of an interlocutory injunction be dismissed.

The Defendant contests the international jurisdiction of German courts, as the Plaintiff did not

provide any tangible statement regarding acts of use by the Defendant in Germany, although

according to the cognizable authority only a cease and desist and information relating to

Germany was demanded. The Defendant is furthermore of the opinion that the cease and desist

application goes too far and is too undetermined as it covers every toy.

The Defendant is first and foremost of the opinion that there is no urgency in this case and

therefore no basis for an injunction [Translator’s note: The remainder of this paragraph is a

summary of the Defendant’s statement, in reported speech in the original]. This applies all the

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 5 of 10 Page ID #:21

more, according to the Defendant, for the information, but also for the cease and desist claim. It

alleges that it has no longer distributed the Barbie doll in dispute in either version in Germany

since November 2018. This can be seen especially from the offers presented by the Plaintiff,

which do not relate to offers of the Defendant and are either offers from foreign dealers or

deliveries to destinations outside Germany. The Plaintiff has therefore not provided any

substantive evidence of current acts of use in Germany. There is therefore no danger of any

change to a situation that could prevent the Plaintiff realizing the rights it is asserting, and there

is accordingly no need for summary proceedings. The assumption under section 140 (3)

MarkenG is therefore refuted. Secondly, the evidence provided for the start of the period of

urgency has been undermined. This can be seen from the dispute, continuing since April,

regarding the Defendant’s US trademark registration “UNO EMOJI“ and the fact that the

Defendant’s “EMOJI STYLE” trademark registration has already been pending in the US for four

years and is open to public inspection. It is not credible that the Plaintiff in the course of these

proceedings failed to research for further uses of the name EMoji by the Defendant in Europe,

including Germany. This applies all the more as the Plaintiff’s business model consists solely of

licensing Emoji trademarks. The sworn affidavit made by the Plaintiff’s director is therefore also

fruitless, as it does not relate to the first knowledge of infringement.

The Defendant is furthermore of the opinion that the Plaintiff has no right to an injunction

because it has no cease and desist claim. There is no co-branding here simply because the

“Emoji Style” add-on is descriptive information, such as often appears on Barbie packages, for

example “Made to move”, “Watercolor Style” or “Sticker Fun“. It is accordingly not being used as

a trade mark. This is supported by the fact that the Emoji Style information appears on packages

in three different languages, which excludes any indication of origin. The designation “Emoji

Style” is also clearly separated from the own mark “Barbie” on a different point of the package,

and the market in question would therefore also not assume co-branding here. Finally, use of the

name is also fully in line with the principle of honest practices in industrial and commercial

matters, as the market being targeted in Germany is not aware of the designation TM and would

not give it any meaning. Irrespective of the question of use indicating origin, the Defendant also

raises the defense of non-use. The Plaintiff at any rate cannot assert the claim for information,

writes the Defendant finally, by way of interlocutory relief, as the sufficiently clear infringement of

the Plaintiff’s trademark rights is not present.

Regarding further details of the material and legal situation, we refer to the briefs from the

parties and the relevant exhibits and to the record of the oral hearing of 3 December 2020

(section 313 (2), 2nd sentence, ZPO).

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 6 of 10 Page ID #:22

Reasons for the decision

The petition for issue of an interlocutory injunction is admissible and, apart from the annex claim

being asserted for rendering of information, also justified.

I.

Landgericht Hamburg has international, local and substantive jurisdiction in accordance with

Articles 124 lit. a, 125 (1), 126 (1) lit. a VO 2017/1001 (EU Trademark Regulation, hereinafter

“EUTR”) in conjunction with sections 125e (1), 125g MarkenG and Article 7, number 2 VO

1215/2012 (Brussels Ia-VO), as there is a risk of repeated sale of the contested Barbie doll in

Germany, after the Defendant had also sold the product in Germany at any rate until the end of

2018. The remainder of the application is also admissible, as the cease and desist obligation

petitioned and now pronounced in the judgment is sufficiently determined by reference to the

concrete name “EMOJI STYLE TM” and is also not formulated too broadly due to the

comprehensive protection of the top ranking EU trademark EM 013098348 “emoji” (hereinafter

“Plaintiff’s Trademark”).

II.

The petition for issue of an interlocutory injunction is also justified for the most part.

1. There are grounds for an injunction as the assumption of section 140 (3) MarkenG was not

refuted by the Defendant. The Plaintiff argued convincingly by means of the sworn affidavit of

its managing partner, Mr. Hüsges, that it did not obtain any knowledge of the contested Barbie

doll being sold in Germany until early September on the occasion of a meeting with its lawyer,

the current legal representative Hucke, for a discussion on further procedure in other disputes

with the company Mattel. Mattel’s registration of the mark “Emoji Style” in the USA also came

to its attention only afterwards in the course of further research, which otherwise has as such

no relevance for any use of this name in Europe. The Plaintiff is in this regard not obliged,

contrary to the Defendant’s opinion, to perform market monitoring due to any special

circumstances, which could establish some earlier positive knowledge, or lack of knowledge

due to gross negligence, on the part of the Plaintiff and thus lead to an elimination of urgency.

Firstly, a large part of the dispute related to a geographically very different market, namely the

USA. Any market behavior and market presence of Mattel in the US cannot – notwithstanding

Mattel’s global operations – lead to an inference of an identical market presence and a

corresponding use of protected marks in the EU or Germany. The Defendant therefore closed

its eyes to stubborn facts, even considering that the dispute in the USA does not relate to the

German market. Second, similar considerations can also apply to the “UNO Emoji” dispute

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 7 of 10 Page ID #:23

that has been continuing in Germany since April 2020. This also does not lead to any market

monitoring obligation due to special circumstances nor to the Defendant being subject, from a

different perspective, to the accusation that it was grossly negligent in shutting its eyes to the

offer of the Barbie doll in dispute, which would have an effect of reducing urgency.

2. It is most probable that the Plaintiff has a right to an injunction in the form of a cease and

desist claim based on the Plaintiff’s Trademark from Article 9 (2) lit. b EUTR and section 125

b, number 2 in conjunction with section 19 (1) MarkenG.

a) The Defendant used the name “emoji” in the form “EMOJI STYLE TM” on the packages of

the disputed Barbie doll in the sense of a co-branding with indication of origin and thus

unlawfully in accordance with Article 9 (2) lit. b EUTR.

In view of the sole distinctive element “Emoji” in the name “Emoji Style”, these are –

notwithstanding the other language formulations – marks with a high degree of similarity on

highly similar products, namely toys. The element “TM” superscripted behind the name “Emoji

Style” will be understood by consumers, the market being targeted, as an indication of the origin

in the Defendant as supplier of the disputed Barbie doll. Similarly, the “R” or a “Reg”

superscripted in a circle behind a name will be understood by the target groups namely as a

statement of trademark protection and thus also an indication of the origin from a particular

company, in this case the owner of the mark “Emoji Style” or “Emoji” as distinguishing element of

the name. Such use of the sign by the Defendant for offering its own goods impairs the function

of the Plaintiff’s Trademark to indicate the origins of the thus identified products and in this way

poses a risk of confusion in the sense of Article 9 (2) lit. b EUTR. In view of this use of on the

Defendant’s product indicating its origin, the market being targeted will assume that the product

is the result of a collaboration between the Defendant and the Plaintiff as owner of the Plaintiff’s

Trademark, i.e. some kind of commercial link between the two companies – whether a licensing

or cooperation in the design – regarding the Barbie doll in dispute.

b) As the Defendant itself undisputedly distributed the contested Barbie doll in the German

market up to November 2018 and because it refused, after receiving a warning, to issue in this

regard a penalty-based declaration of cease and desist and obligation, there are no grounds for

assuming any end to the risk of recurrence posed by the undisputed infringement.

c) The Defendant’s defense of non-use pursuant to Articles 18, 127 (3) EUTR, which can also

be raised in the proceedings for interlocutory relief (OLG Frankfurt, GRUR-RR 2020, 102,

number 30 - Batterie-Plagiat) is not sustainable. The Plaintiff demonstrated by way of the

attorney statements by two of its legal representatives, regarding which reference is made to the

record of the oral hearing of 3 December 2020 that it has used the name “emoji”, which is

covered by the Plaintiff’s Trademark, including in Germany within the past 5 years, quite

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 8 of 10 Page ID #:24

specifically and thus maintaining its legal rights. The Plaintiff’s legal representative von Bernuth

stated in his capacity as attorney at the oral hearing that he had helped negotiate a license

agreement between the Plaintiff, represented by Bavaria license agency, and Ferrero in 2017,

the subject of which was use of the name “Emoji” on the product “Kinder Joy” and covered, inter

alia, the territory of Germany. The Plaintiff’s legal representative Hucke added in his capacity as

attorney at the oral hearing that he has received a bill of costs from Bavaria license agency

addressed to Ferrero relating to 170,000,000 units of the “Kinder Joy” product in the EU between

January and August 2019. The court can see no tangible reasons for doubting the accuracy of

these statements.

3. With regard to the claim for information also being asserted by the Plaintiff, there are no

grounds for an injunction. Only in exceptional cases can information be demanded due to the

prohibition of foreclosure of the main case by way of an interlocutory injunction, and only in

cases where the underlying legal infringement is evident (section 125b, number 2 in conjunction

with section 19 (7) MarkenG) and the party making the petition has a justified interest in ensuring

that abundant sources of further infringement of rights are sealed as quickly as possible or when

the information is of existential importance for the petitioning party (see in this regard LG

Hamburg, GRUR-RR 2014, 47 f). This specifically does not cover claims for rendering of

information regarding infringement of industrial property rights as preparation for some

corresponding claims for damage compensation or enrichment. There is no evidence of any of

these exceptional cases obtaining here, as even according to the Plaintiff’s statement there

would appear to be only residual stock of the items available in the German market and the

information would therefore serve only as preparation for damage claims, which are reserved for

the main proceedings.

III.

The decision on costs is based on section 92 (1), 1st sentence 1 ZPO. The decision on

provisional enforceability is based on section 708, number 11, 711 ZPO.

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 9 of 10 Page ID #:25

Case 2:21-cv-01931 Document 1-1 Filed 03/02/21 Page 10 of 10 Page ID #:26

EXHIBIT B

Case 2:21-cv-01931 Document 1-2 Filed 03/02/21 Page 1 of 5 Page ID #:27

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

The table below presents the data as entered.

Input Field Entered

SERIAL NUMBER 87070972

LAW OFFICE ASSIGNED LAW OFFICE 119

MARK SECTION

MARK https://tmng-al.uspto.gov/resting2/api/img/87070972/large

LITERAL ELEMENT EMOJI STYLE

STANDARD CHARACTERS YES

USPTO-GENERATED IMAGE YES

MARK STATEMENTThe mark consists of standard characters, without claim to any particular font style,size or color.

ARGUMENT(S)

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

RESPONSE TO OFFICE ACTION

  In re:  Trademark Application of:Mattel, Inc.333 Continental BoulevardEl Segundo, California 90245-5012Serial No.:    87/070972Filing Date:  June 14, 2016               Class:  28Mark:  EMOJI STYLE                    

 Trademark Law Office:  119Examining Attorney:  Patty Evanko Commissioner for TrademarksP.O. Box 1451Alexandria, VA  22313-1451  Madam: This is in response to the Office Action mailed September 22, 2016. RESPONSE

 The Examining Attorney refused registration under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), alleging that Applicant’s proposed mark merelydescribes a feature or characteristic of applicant’s goods.   Applicant respectfully disagrees with the Examining Attorney’s determination and requests that therefusal be withdrawn. Applicant is of the opinion that contrary to the Examining Attorney’s determination, the mark EMOJI STYLE does not immediately conjure an ingredient, quality,characteristic, function, feature, purpose, or use of the intended products, but rather may be suggestive of a type of play pattern.  TMEP Section 1209.01(a) statesthat “suggestive marks are those which require imagination, thought or perception to reach a conclusion as to the nature of the goods or services.   Thus, asuggestive term differs from a descriptive term, which immediately tells something about the goods or services.”   It further states “suggestive marks, like fancifuland arbitrary marks, are registrable on the Principal Register without proof of secondary meaning.  Thus, a designation does not have to be devoid of all meaning inrelation to the goods and services to be registrable.”   See In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removalhand tool).  As a result, the mark as a whole is suggestive, rather than merely descriptive of the identified goods, such as the mark FLIGHT TRAVELER which

Case 2:21-cv-01931 Document 1-2 Filed 03/02/21 Page 2 of 5 Page ID #:28

was registered by the USPTO for luggage.  See US Reg. No. 2462488.  Even if two terms may be descriptive (which the applicant does not here concede), thequestion is whether the combination results in a composite mark that is itself descriptive. TMEP Section 1209.01(d). Both FLIGHT and TRAVELER may bedescriptive on their own for “luggage”, but when combined the resulting composite mark is not descriptive and therefore capable of registration on the PrincipalRegister.  See TMEP Section 1209.03(d) for guidelines regarding combined terms. In addition, Applicant is the owner of the following registrations on the Principal Register that incorporate the STYLE component on similar goods:  

Mark Reg. No. Issued

SPARKLE & STYLE 4230670 October 23, 2012

SKATIN’ WITH STYLE 4556728 November 15, 2012

SUNNY STYLE 4585623 August 12, 2014

BARBIE STYLE 4626002 October 21, 2014

SHIMMER STYLE 4664391 December 30, 2014

  In view of the above, Applicant respectfully requests the Examining Attorney withdraw the refusal to register made under Trademark Act Section 2(e)(1), 15U.S.C. Section 1052(e)(1) and to pass this application to publication. Respectfully submitted, 

ADDITIONAL STATEMENTS SECTION

DISCLAIMER No claim is made to the exclusive right to use EMOJI apart from the mark as shown.

SIGNATURE SECTION

RESPONSE SIGNATURE /mcm/

SIGNATORY'S NAME MICHAEL MOORE

SIGNATORY'S POSITION ATTORNEY OF RECORD, CA BAR MEMBER

SIGNATORY'S PHONE NUMBER 310-252-6733

DATE SIGNED 03/14/2017

AUTHORIZED SIGNATORY YES

FILING INFORMATION SECTION

SUBMIT DATE Tue Mar 14 19:52:06 EDT 2017

TEAS STAMP

USPTO/ROA-XXX.XX.XX.XXX-20170314195206697247-87070972-5806a4a3644dafd10cfcb431bd4c0d29356e89ae4a548f89866cf6bbfc1b949db-N/A-N/A-20170314191004211165

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87070972 EMOJI STYLE(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/87070972/large) has beenamended as follows:

ARGUMENT(S)

In response to the substantive refusal(s), please note the following:

Case 2:21-cv-01931 Document 1-2 Filed 03/02/21 Page 3 of 5 Page ID #:29

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

RESPONSE TO OFFICE ACTION

  In re:  Trademark Application of:Mattel, Inc.333 Continental BoulevardEl Segundo, California 90245-5012Serial No.:    87/070972Filing Date:  June 14, 2016               Class:  28Mark:  EMOJI STYLE                    

 Trademark Law Office:  119Examining Attorney:  Patty Evanko Commissioner for TrademarksP.O. Box 1451Alexandria, VA  22313-1451  Madam: This is in response to the Office Action mailed September 22, 2016. RESPONSE

 The Examining Attorney refused registration under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), alleging that Applicant’s proposed mark merelydescribes a feature or characteristic of applicant’s goods.   Applicant respectfully disagrees with the Examining Attorney’s determination and requests that the refusalbe withdrawn. Applicant is of the opinion that contrary to the Examining Attorney’s determination, the mark EMOJI STYLE does not immediately conjure an ingredient, quality,characteristic, function, feature, purpose, or use of the intended products, but rather may be suggestive of a type of play pattern.  TMEP Section 1209.01(a) states that“suggestive marks are those which require imagination, thought or perception to reach a conclusion as to the nature of the goods or services.   Thus, a suggestive termdiffers from a descriptive term, which immediately tells something about the goods or services.”   It further states “suggestive marks, like fanciful and arbitrary marks,are registrable on the Principal Register without proof of secondary meaning.  Thus, a designation does not have to be devoid of all meaning in relation to the goodsand services to be registrable.”   See In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool).  As a result,the mark as a whole is suggestive, rather than merely descriptive of the identified goods, such as the mark FLIGHT TRAVELER which was registered by the USPTOfor luggage.  See US Reg. No. 2462488.  Even if two terms may be descriptive (which the applicant does not here concede), the question is whether the combinationresults in a composite mark that is itself descriptive. TMEP Section 1209.01(d). Both FLIGHT and TRAVELER may be descriptive on their own for “luggage”, butwhen combined the resulting composite mark is not descriptive and therefore capable of registration on the Principal Register.  See TMEP Section 1209.03(d) forguidelines regarding combined terms. In addition, Applicant is the owner of the following registrations on the Principal Register that incorporate the STYLE component on similar goods:  

Mark Reg. No. Issued

SPARKLE & STYLE 4230670 October 23, 2012

SKATIN’ WITH STYLE 4556728 November 15, 2012

SUNNY STYLE 4585623 August 12, 2014

BARBIE STYLE 4626002 October 21, 2014

SHIMMER STYLE 4664391 December 30, 2014

  In view of the above, Applicant respectfully requests the Examining Attorney withdraw the refusal to register made under Trademark Act Section 2(e)(1), 15 U.S.C.Section 1052(e)(1) and to pass this application to publication. Respectfully submitted, 

ADDITIONAL STATEMENTS

Disclaimer

No claim is made to the exclusive right to use EMOJI apart from the mark as shown.

Case 2:21-cv-01931 Document 1-2 Filed 03/02/21 Page 4 of 5 Page ID #:30

SIGNATURE(S)

Response Signature

Signature: /mcm/     Date: 03/14/2017Signatory's Name: MICHAEL MOORESignatory's Position: ATTORNEY OF RECORD, CA BAR MEMBER

Signatory's Phone Number: 310-252-6733

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, whichincludes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorneyor an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agentnot currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or isconcurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the priorrepresentative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'sappointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        

Serial Number: 87070972Internet Transmission Date: Tue Mar 14 19:52:06 EDT 2017TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-20170314195206697247-87070972-5806a4a3644dafd10cfcb431bd4c0d29356e89ae4a548f89866cf6bbfc1b949db-N/A-N/A-20170314191004211165 

Case 2:21-cv-01931 Document 1-2 Filed 03/02/21 Page 5 of 5 Page ID #:31

EXHIBIT C

Case 2:21-cv-01931 Document 1-3 Filed 03/02/21 Page 1 of 5 Page ID #:32

Reg. No. 5,778,247

Registered Jun. 18, 2019

Int. Cl.: 28

Trademark

Principal Register

Marco Hüsges  (GERMANY INDIVIDUAL)Eschenweg 1 A40667 MeerbuschFED REP GERMANY

emoji company GmbH  (GERMANY GESELLSCHAFT MIT BESCHRÄNKTERHAFTUNG (GMBH))Necklenbroicher Strasse 52-5440667 MeerbuschFED REP GERMANY

CLASS 28: Kites; draughts games, namely, checkers; checkerboards; board games; arcade,card, non-plush dice games; playing cards; non-plush playing balls; non-plush balls forgames; playthings, namely, theatrical, toy, paper face masks; non-plush dice; playthings,namely, non-plush dolls, non-plush action figures; non-plush toys for household pets; non-plush toy vehicles; non-plush toy figures; non-plush toy models; novelties for parties anddances, namely, party favours in the nature of paper party favors, small non-plush toys, blow-outs; chess games; non-plush dolls; party hats of paper; non-plush toy mobiles; mah-jong; toyspinning tops; confetti; Christmas crackers; card games; chips for gaming; disc counters forgames; parlour games; conjuring apparatus, namely, non-plush magic tricks; apparatus forgames, namely, non-plush balls for games, non-plush bats for games, bingo game playingequipment; coin-operated slot machines; automatic slot machines; remote-controlled toyvehicles; toy masks; scale model vehicles; dominoes; Christmas tree stands; bingo cards;skittles; playthings, namely, baby, infant's non-plush rattles; toy models in kit form, namely,toy model hobbycraft kits; marbles; jigsaw puzzles; toy balloons; toy air pistols

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANYPARTICULAR FONT STYLE, SIZE OR COLOR

PRIORITY DATE OF 08-15-2014 IS CLAIMED

OWNER OF INTERNATIONAL REGISTRATION 1233267 DATED 08-26-2014,EXPIRES 08-26-2024

SER. NO. 79-975,148, FILED 08-26-2014

Case 2:21-cv-01931 Document 1-3 Filed 03/02/21 Page 2 of 5 Page ID #:33

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 Renewalbetween 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 withthe payment of an additional fee.

*ATTENTION MADRID PROTOCOL REGISTRANTS:  The holder of an international registration with anextension 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).  Thedeadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those fornationally issued registrations.  See 15 U.S.C. §§1058, 1141k.  However, owners of international registrationsdo not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlyinginternational registration at the International Bureau of the  World Intellectual Property Organization, underArticle 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from thedate of the international registration.  See 15 U.S.C. §1141j.  For more information and renewal forms for theinternational 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 http://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 # 5778247

Case 2:21-cv-01931 Document 1-3 Filed 03/02/21 Page 3 of 5 Page ID #:34

Reg. No. 5,343,650

Registered Nov. 28, 2017

Int. Cl.: 9, 14, 20, 24, 28

Trademark

Principal Register

emoji company GmbH (GERMANY UNKNOWN)Necklenbroicher Strasse 52-5440667 Meerbusch, FED REP GERMANY

CLASS 9: Cabinets for loudspeakers; cards with integrated circuits; printed circuits;television apparatus, namely, televisions, television apparatus for projection purposes,television transmitters; decorative magnets; magnetic encoded cards, namely, magneticallyencoded key cards, magnetically encoded identity cards, magnetically encoded gift cards; 3 dspectacles; protective helmets; protective helmets for sports; computer accessories, namely,mice

CLASS 14: Horological instruments; watchstraps; clock cases; presentation cases forwatches; jewelry ornaments; jewellery; precious metal key rings in the nature of trinkets orfobs, jewelry rings; pearls; medals; medallions; wire of precious metal for use in makingjewelry, namely, jewelry cable; pins being jewelry; artificial pearls for making jewelry; tiepins; ivory jewelry; jewelry of yellow amber

CLASS 20: Air mattresses, not for medical purposes, namely, air mattresses for use whencamping; inflatable furniture; bedding except bedclothes, namely, beds

CLASS 24: Bed clothes, namely, bed skirts; cushion covers; bed covers of paper; tracedcloths for embroidery; non-woven textile fabrics; fitted toilet lid covers of fabric; fabrics fortextile use, textile fabrics for home and commercial interiors, textile mattress covers;household linen; cotton fabrics; bath linen except clothing; textile banners; tissues, of textile,for removing make-up, namely, cloth napkins for removing make-up, textile napkins forremoving make-up; covers for seat cushions; cot canopies, namely, bed canopies, cribcanopies

CLASS 28: Teddy bears; soft toys, namely, soft sculpture toys, stuffed dolls and animals

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANYPARTICULAR FONT STYLE, SIZE OR COLOR

OWNER OF U.S. REG. NO. 4595110, 4868832, 4893876, 4766492

PRIORITY DATE OF 08-15-2014 IS CLAIMED

OWNER OF INTERNATIONAL REGISTRATION 1233267 DATED 08-26-2014,EXPIRES 08-26-2024

SER. NO. 79-975,087, FILED 08-26-2014

Case 2:21-cv-01931 Document 1-3 Filed 03/02/21 Page 4 of 5 Page ID #:35

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 Renewalbetween 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 withthe payment of an additional fee.

*ATTENTION MADRID PROTOCOL REGISTRANTS:  The holder of an international registration with anextension 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).  Thedeadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those fornationally issued registrations.  See 15 U.S.C. §§1058, 1141k.  However, owners of international registrationsdo not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlyinginternational registration at the International Bureau of the  World Intellectual Property Organization, underArticle 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from thedate of the international registration.  See 15 U.S.C. §1141j.  For more information and renewal forms for theinternational 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 http://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 # 5343650

Case 2:21-cv-01931 Document 1-3 Filed 03/02/21 Page 5 of 5 Page ID #:36

EXHIBIT D

Case 2:21-cv-01931 Document 1-4 Filed 03/02/21 Page 1 of 5 Page ID #:37

Sponsors

• 700+ Trademarks

• 6000+ Copyrights

• 350+ Licensee

• 50+ Style Guides

• Custom Development

Oct. 10-12 2017 / BOOTH E70

licensing@emoji.com

www.emoji.com

See you in London!

Here,there,everywhere!

BRANDS

22www.licensing.biz

2COCA-COLA

Brand Owner: The Coca-Cola Company

Up four positions in this year’s Power List, the world’s number one soft drink brand, Coca-Cola has enjoyed a stellar year, with the firm’s licensing arm making its debut at the Las Vegas’ 2017 Licensing Expo. But the brand’s burgeoning licensing offering hasn’t stopped there. Earlier this year Coca-Cola rolled out a line of NCAA branded bottles, while also celebrating its 50-year partnership between US drinks firm, ICEE. Most recently, the firm joined forces with FIFA’s fictional character, Alex Hunter, for an endorsement deal, which sees Hunter only drink Coke Zero in an effort to push the brand to more fans. No doubt the firm has even more sweet deals in the works to wow us in the coming months.

3EMOJI

Brand Owner: emoji company ®

This year saw the emoji brand light up the silver screen with the debut of The Emoji Movie, where all manner of emojis, from a devil, ice cream, hi-five, poop and more all got their five minute’s of fame. Ahead of the movie’s release, the company secured a raft of licensees from the likes of Aymax, Mepal, Little Concepts, Funny Products, Van Der Erve all covering categories such as apparel, gift wrap, watches and more. Since signing its first licensing agreement in the second quarter of 2015, emoji has garnered more than 325 licencees since then as the global company continues to ramp up its offerings for fans. With its place at the forefront of popular culture firmly established, don’t expect emoji to dissapear like a snapchat anytime soon.

Case 2:21-cv-01931 Document 1-4 Filed 03/02/21 Page 5 of 5 Page ID #:41