Meta Company Trademark Case against Facebook

Introduction:

Just picture waking up to the news that a global powerhouse has stolen the name of the company you founded over a decade ago. In an interview with Inc., the creator of the "12-year-old startup META" claims that this is exactly what happened to him when Facebook changed its name to Meta.

For the sake of clarity, I will refer to Facebook, the multibillion-dollar social media corporation, as "Facebook" and to Meta. is, the smaller augmented reality firm, "Meta.is" (Meta. is the other of the company META).

What is META (or Meta.is) and why it sued Facebook (which changed its name to Meta)?

META (or Meta.is) is the abbreviated form of the company's full name, METAxLLC, which specializes in site-specific installation art. The company's founder, Justin Bolognino, established it in 2010 and it is headquartered in Chicago. The 12-year-old startup Meta. is in the business of virtual reality and offers multi-sensory live experiences utilizing VR and AR. Meta.is had built high-profile experiences at Coachella, SXSW, and other big conferences, and had worked with Microsoft and Red Bull, among many others.

What are the issues and claims of the company?

On October 28, 2021, Facebook officially changed its name to Meta to reflect the company's transition from a social media company to one focused on the metaverse, an immersive form of the internet-driven by augmented and virtual reality technologies. When the firm formerly known as Facebook changed its name to Meta.is, it was sued in federal court in the Southern District of New York. Trademark infringement, unfair competition, and reputational harm are among the claims Meta has made. It also claims that Zuckerberg's name change damaged the company's reputation. In addition, Facebook poached some of Meta.is most valuable clients by hiring the artists it had previously collaborated with to develop interactive experiences. The Company's attorney, Dyan Finguerra-DuCharme, asserted that Meta.is had suffered "irreparable and irrevocable injury" to its business and sought specific monetary damages. In their case, Meta.is claimed that they "can no longer supply services and products under the Meta mark because consumers are likely to incorrectly infer that Meta's products and services originate from Facebook".

The lawsuit contends that Meta.is and Facebook competed for the same conferences and clients. Privacy law, artificial intelligence law, social media law, and intellectual property law expert Govind k Chaturvedi says the trademark case has a solid foundation because the two companies are so similar. They both aim to create social environments where users can become fully immersed in a digital world.

The company is called METAx LLC, but the complaint claims that it has been using the term "META" as a service mark since at least 2017. For purposes of trademark infringement, a company's legal name is irrelevant, but the trademarks and service marks it uses are critical.

The Rationale of the lawyers associated with META and Former Facebook lawyers are as follows:

The lawyers for META notified former Facebook lawyers of the infringement and asked them to take action. Facebook's legal team retorted that the two businesses were in completely different industries, thus there was no way for customers to get confused. In their brief, the attorneys for META said that the company's "multi-sensory live experiences to engage audiences and consumers" set it apart from competitors. The corporation formerly known as Facebook plans to use the Meta brand to unify its myriad social technology products and services and to facilitate the actualization of the metaverse. They further claimed that the original Facebook had backdated its trademark before META was ever created by acquiring the trademarks of other companies with the same name.

Trademark Laws: A Short Introduction

Trademark law governs the use of devices (such as words, phrases, symbols, product shapes, and logos) by producers and sellers to differentiate their wares from those of competitors. Trademark law also applies to service marks, even if they are not utilized in the same way as trademarks for physical products.

This article elaborates on the rules concerning trademarks in the United States because Facebook has sought trademark protection for the word "Meta" with the United States Patent and Trademark Office (USPTO).

Some common law trademark rights exist in the United States as a result of the simple use of a mark. Nonetheless, trademark registration with the federal government, if available, or a state government is almost always recommended to acquire the most protection for a mark. The ® symbol denotes that a trademark has been registered with the United States Patent and Trademark Office. Use a "tm" after an unregistered trademark and an "sm" after an unregistered service mark.

Under U.S. trademark law, trademark infringement occurs when a third party utilizes a device (a mark) likely to cause consumer confusion as to the origin or sponsorship of the associated products or services. One exception to the rule that prohibits competing businesses from using the same trademark is when their products are distinguishable enough from one another to avoid confusing customers. Under common law trademark rights, identical marks may be used so long as there is no geographic overlap in the use of the marks. Marks that are registered with the federal government are safeguarded across the entire country.

United States Patent and Trademark Office (USPTO)

Facebook's parent firm, Meta Platforms Inc., sought to trademark the name "Meta" with the United States Patent and Trademark Office (USPTO). The application was filed in several different classes, including those for computer programs, virtual reality, augmented reality devices, and social networking services.

The United States Patent and Trademark Office (USPTO) is the government department in charge of patenting and trademarking in the USA. The Constitution requires that the legislative branch "advance the Development of Science and useful Arts, by securing for limited Times to Writers and Inventors the exclusive Right to their Writings and Discoveries," and the USPTO is carrying out this duty. Under the Constitution's Commerce Clause, the United States Patent and Trademark Office (USPTO) is authorized to issue trademark registrations (Article I, Section 8, Clause 3). The US manufacturing sector has thrived under the current regime of protection. Millions of Americans now have jobs that did not exist before due to new inventions, discoveries of novel applications for existing items, and other similar developments.

Trademark Electronic Search System (TESS)

All trademarks registered or sought registration in the United States are kept in the Trademark Electronic Search System (TESS). Several key aspects of the mark are recorded in detail in each TESS record. All the components are searchable data. In TESS, you can look for:

• Any marks that have common elements
• A specific mark if you know one or more of its elements.

Owning a trademark vs. Having a registered trademark

Whenever your trademark is used in connection with your goods or services, you get legal ownership of that mark. The use of your trademark grants you legal protections within a certain geographic area where your goods or services are offered. Applying to register your trademark with us will grant you broader protection across the country.

Trademark registration is optional for you. The rights and protections afforded by a registered trademark, however, surpass those afforded by an unregistered one.

Suppose you sell handcrafted jewelry at a farmer's market; as a trademark, you might use a logo. You may opt to seek federal registration of your trademark when your company expands in size and scope, particularly if it will be used in connection with an internet presence. By choosing to register your trademark with us, you will have exclusive rights to use it across the United States.

Conclusion

Facebook and Meta.is currently engaged in litigation, and a ruling has not been issued. Nobody knows who will come out on top in a court case involving trademark infringement or violation. Legal conflicts involving the infringement of intellectual property have been making headlines frequently in recent years, and trademark infringement has not gone away. Some of these instances have settled out of court, while others have gone to trial, with disastrous results for the infringing parties in terms of both financial losses and public perception. Companies need to do their homework before committing to a trademark and then keep tabs on how it's being used to make sure no one is misappropriating their brand. Companies should also have a solid plan in place to protect their trademarks and pursue legal action against infringers. Ultimately, protecting intellectual property rights is critical for everyone involved, including firms, consumers, and other businesses.