Facebook® is now Meta…or at least it hopes to be.

Last month, Facebook announced that it is rebranding to “Meta”.  Some trademark issues might be problematic for them in this brand transition.

Facebook applied for the “META” trademark in the US on October 28, 2021.  Their application lists an enormous number of goods and services, including many technology-related goods and services, in Classes 9, 28, 35, 38, 41, 42, and 45.  However, Facebook is also not the first to apply for the “META” mark in connection with technology-related goods and services.

An Arizona tech start-up, Meta PC,  which specializes in custom gaming PCs, filed an application for the “META” mark two (2) months before Facebook’s filing, on August 23, 2021, and claims first use of the mark in November 2020.  The Arizona company’s META mark is applied for in connection with computer-related Class 9 goods, including, for example “computers, laptops and portable computers, tablets, computer peripherals, servers, networking equipment, software”.  Shortly after Facebook announced its rebrand, Meta PC publicly offered to sell its name to Facebook for $20 million.   It is unclear how Facebook will respond.

Another entity, Meta Company, posted a letter on its website claiming to have refused low-ball offers from Facebook’s legal team in the months preceding Facebook’s announcement.  According to the letter, Meta Company believes Facebook has infringed their trademark and has filed a legal action against Facebook.  It is unclear what trademark, if any, is actually owned by Meta Company.  There are numerous marks for “META” or “METACOMPANY” on the US Trademarks Register.  Regardless, it will be interesting to see how Facebook responds to Meta Company’s claim.

It is possible that these trademarks will not be obstacles to Facebook’s registration or use of the META mark.  For one trademark to impede registration or use of another mark, the marks must be the same or confusingly similar and the marks must be associated with similar goods or services, such that consumers are likely to be confused.  At this stage, it is not clear whether Facebook, Meta PC, and/or Meta Company’s goods or services would be considered “confusingly similar”.

That said, a key lesson from Facebook’s META trademark case is the importance of conducting trademark registrability searches before filing a trademark application.  A search, and careful consideration of the results, can help an applicant determine what potential obstacles may exist whether choosing a mark for the first time or when considering re-branding.  For more information on trademark registrability searches or registering trademarks, please contact our experts at Brion Raffoul LLP.

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