IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Registration of EMONSTER K.K. Mark: ANIMOJI Reg. No.: 4,212,559 APPLE INC. Petitioner, v. CANCELLATION NO. _ EMONSTER K.K. ' Registrant. PETITION FOR CANCELLATION EMONSTER K.K., a company organized under the laws of Japan, with an address at 1-1- 39 Hiroo Shibuya-ku, Ebisu Prime Square Tower 1F MBE-310, Tokyo Japan 150-0012 (\"Registrant\"), is listed in the records of the U.S. Patent and Trademark Office (\"USPTO\") as the registrant of US. Registration No. 4,712,559 (the \"Registration\") of ANIMOJI (the \"Mark\"), issued on March 31, 2015, for \"computer application software for mobile and cellular phones and handheld computers, namely, software for use in animating, processing, and transmitting images\" in International Class 9. APPLE INC., a California corporation with an address at 1 Infinite Loop, Cupertino, California 95014 (\"Apple\"), believes it will be damaged by the continued registration of the Mark and, through its authorized attorneys, hereby petitions to cancel the Registration. The grounds for cancellation are as follows: COUNT I THE REGISTRATION IS VOID AB INITIO 1 . Apple is the world-famous designer, producer, and marketer of consumer electronics, computer software, and other products, including the enormously successful iPhone device, which helped popularize the use of "emoji" designs in electronic messaging. 2 . Apple seeks to cancel the Registration under Section 1 of the Trademark Act because the Registration is void ab initio as the applicant for the Mark did not, and could not, own the Mark at the time it filed the application. 3. On August 20, 2014 (the "Filing Date"), an entity identified as EMONSTER, INC., a Washington corporation, filed application Serial No. 86/372,709 (the "EMONSTER Application") to register the Mark with the USPTO. The EMONSTER Application was filed under Section 1(a) of the Trademark Act for the goods "computer application software for mobile and cellular phones and handheld computers, namely, software for use in animating, processing, and transmitting images" in Class 9. The EMONSTER Application was signed by Enrique Bonansea, who was identified as the President of EMONSTER, INC. 4. The Registration issued to EMONSTER, INC. on March 31, 2015 (the "Registration Date"). 5. On information and belief, EMONSTER, INC. was incorporated under the laws of the State of Washington on or around July 19, 1999, and Mr. Bonansea was identified as the governor of EMONSTER, INC. A screenshot of the Washington Secretary of State Corporations Division's records relating to EMONSTER, INC. is attached as Exhibit A. 6. On information and belief, EMONSTER, INC.'s corporate charter expired on or around July 31, 2004, and EMONSTER, INC. was dissolved on November 1, 2004. See Exhibit A.7. On November 1, 2004. the Secretary of State of the State of Washington issued a Certicate of Administrative Dissolution of EMONSTER, INC. A copy of the Certicate of Administrative Dissolution is attached as Exhibit B. 8. Washington state corporate records have no listing of an entity organized under the laws of the State of Washington with the name EMONSTER, INC. that was in existence as of the Filing Date. 9. On information and belief, EMONSTER, INC. did not exist as of the Filing Date. 10. On information and belief, EMONSTER, INC. did not own the Mark as of the Filing Date. 11. 37 CFR 2.17 provides that \"[a]n application led in the name of an entity that did not own the mark as of the ling date of the application is void.\" 12. The EMONSTER Application was void on account of the fact that EMONSTER, INC. did not exist as of the Filing Date, and therefore did not own the Mark as of the Filing Date. 13. The subsequent attempted assignment of the Mark from EMONSTER, INC. to Registrant does not rectify this fatal aw. 14. On August 24, 2017, an Assignment dated August 22, 2017 and signed by Enrique Bonansea as President of EMONSTER, INC. on August 23, 201? was submitted to the USPTO. The Assignment asserts that EMONSTER, INC. is the owner of the Mark and purports to convey to Registrant all of its right, title, and interest in and to the Mark and the Registration (the \"Assignment\"). A copy of the Assignment is attached as Exhibit C. 15. Washington state corporate records have no listing of an entity organized under the laws of the State of Washington with the name EMONSTER, INC., which was in existence when the Assignment was executed. 16. On information and belief, EMONSTER, INC. did not exist as of the Registration Date. Nor did it exist as of the date when the Assignment was executed. On information and belief, it has not existed at any time since November 1, 2004. 1?. EMONSTER, INC., thus, did not own the Mark or the Registration as of the date when the Assignment was executed. 18. The Assignment, therefore, was invalid because EMONSTER, INC. did not exist as of the date when the Assignment was executed and was incapable of conveying anything to Registrant. Because the Assignment was invalid, Registrant is not the owner of the Registration. 19. The Registration creates a legal presumption that Registrant has valid and exclusive rights in the Mark for goods identified in the Registration. 20. For the reasons set forth above, Registrant is not entitled to the Registration or to the legal presumptions that the Registration creates. 21. The continued presence of the Registration on the federal trademark register constitutes an obstacle to Apple' s intended use of the term \"animoji.\" The Registration, thus, is causing injury and damage to Apple. COUNT II FRAUD ON THE US. PATENT AND TRADEMARK OFFICE 22. Apple seeks to cancel the Registration on the ground that it was obtained as a result of knowingly false statements about the ownership and use of the Mark, which were made with the intent to deceive the USPTO and constitute fraud on the USPTO. 23. EMONSTER, INC. did not exist as of the Filing Date because it was dissolved on or around November 1, 2004. However, in the EMONSTER Application, EMONSTER, INC. falsely claimed to be the owner of the Mark. Consequently, the EMONSTER Application was fraudulent and the Registration is invalid. 27. As of the Filing Date, EMONSTER, INC. did not exist and, accordingly, had never used the Mark in commerce in connection with any of the goods identied in the Registration. 28. In the EMONSTER Application, EMONSTER, INC. did not allege or submit any documentary evidence of any related companies or licensees. 29. Thus, as of the Filing Date, neither EMONSTER, INC. nor any related companies or licensees were making use in commerce (as that term is defined in Section 45 of the Trademark Act, 15 U.S.C. 1127) of the Mark as a mark on any of the goods identified in the Registration. 30. Further, Enrique Bonansea knew EMONSTER, Inc. did not exist and was not using the Mark in commerce as of July 22, 2014 or the Filing Date. 31. As shown in Exhibits A and B, Washington state Secretary of State records list the address of EMONSTER, INC. as \"Clo Enrique E. Bonansea.\" 32. As shown in Exhibit B, the Secretary of State of the State of Washington mailed Enrique Bonansea a copy of the Certicate of Administrative Dissolution stating that EMONSTER, INC. was dissolved as of November 1, 2004. 33. Enrique Bonansea's sworn declaration stating that \"the applicant is the owner of the trademarkfservice mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce on or in connection with the goods! services in the application, and such use by the applicant's related company or licensee inures to the benefit of the applicant\" was false. This false declaration was made knowingly and with the intent to deceive the USPTO for the purpose of obtaining the Registration. 34. Enrique Bonansea's sworn declaration acknowledges that willful false statements jeopardize the validity of the Registration. 35. The USPTO accepted Enrique Bonansea1 s sworn declaration and approved the EMONSTER Application for publication, which is a prerequisite to registration. Accordingly, the declaration was material. 36. Enrique Bonansea's sworn declaration was knowingly false, made with the intent to deceive the USPTO and was material to the USPTO's decision to issue the Registration. As a result the Registration is invalid because it was procured through fraud on the USPTO. 3?. In addition to the declaration, Mr. Bonansea committed a second act of fraud in executing the Assignment and submitting it to the USPTO. 38. As shown in Exhibit C, on August 23, 2017, Enrique Bonansea signed the Assignment, which purports to convey to Registrant the right, title, and interest of the non- existent entity EMONSTER, INC. in and to the Mark and the Registration. 39. The statement in the Assignment that the non-existent entity EMONSTER, INC. is the owner of the Mark is false. Mr. Bonansea knowingly made this statement with the intent to deceive for the purpose of attempting to maintain the fraudulently procured Registration. 40. The Registration creates a legal presumption that the Registrant has valid and exclusive rights in the Mark for goods identified in the Registration. 41. For the reasons set forth above, Registrant is not entitled to the Registration or to the legal presumptions that the Registration creates. 42. The continued presence of the Registration on the federal trademark register constitutes an obstacle to Apple's intended use of the term \"animoji.\" The Registration, thus, is causing injury and damage to Apple. WHEREFORE, Apple prays that Registration No. 4,712,559 be canceled. Respectfully submitted, Dated: September 11, 2017 Dale Cendali/ Dale Cendali, Esq. Kirkland & Ellis LLP 601 Lexington Avenue New York, NY 10022 Counsel for Petitioner Telephone: (212) 446-4800 Apple Inc. Email: dale.cendali@kirkland.com24. In the EMONSTER Application, EMONSTER, IN C. claimed that the Mark was rst used by the applicant or the applicant's related company, licensee, or predecessor in interest at least as early as July 22, 2014, and rst used in commerce at least as early as July 22, 2014, and was in use in such commerce as of the ling date. 25. The EMONSTER Application was signed by Enrique Bonansea, who held himself out as the President of EMONSTER, INC. Mr. Bonansea's signature is preceded by the following declaration: The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 1051(a), the applicant is the owner of the trademarkfservice mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce on or in connection with the goodsfservices in the application, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the specimen(s) shows the mark as used on or in connection with the goodsfservices in the application; andfor if the applicant filed an application under 15 U.S.C. Section 1051(b), Section 1126(d), andr'or Section 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goodsa'services in the application. The signatory believes that to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goodsr'services of such other person, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of hisfher own knowledge are true and all statements made on information and belief are believed to be true. 26. As of the alleged date of first use of July 22, 2014, EMONSTER, INC. did not exist