Big changes are coming for social media giant, Facebook. While watching commercials between football games over Thanksgiving, it became apparent that Facebook was spending a considerable amount of money to advertise the re-branding of itself as Meta. According to its website, “the metaverse is the next evolution of social connection.”
This re-branding comes at a time when Facebook is under fire for leaked documents revealing purposefully hidden research regarding the platform’s negative effects on mental health in teenagers, on top of its already crumbling reputation. With its application for trademark protection only filed on October 28, 2021, it appears that Facebook is scrambling for a new look.
Meta Trademark Application
Meta’s trademark application reveals a more in-depth analysis of what Meta is pursuing: an appetite to make its way into all corners of the internet – and our lives. Some of the services described in the application refer to employment opportunities; financial donation services; payment transfers; artificial intelligence software; video calls; home device integration software; multifunction devices for measuring heart rate, calories burned, quality of sleep, etc.; computer search engine software; telephone directory information; concierge services; and, yes, even legal services. This is not an exhaustive list.
Of course, just because those services are listed, does not mean that the goods and services will come to fruition. However, the combination of choosing a common word like “Meta” and diving into so many different avenues of goods and services, Meta has set itself up for trademark litigation. A quick search of the United States Patent and Trademark Office (“USPTO”) website reveals several “meta” marks, oftentimes in the same International Class (“IC”) as Meta. (There are 45 IC codes, and each IC code is used to identify a particular good or service group to make identifying overlap easier).
Trademarks and Trade Names – Best Practices
Clearly, Meta is attempting to cover a lot of ground with its wide range of IC codes, possibly opening itself up to trademark litigation. A good way to avoid alleged trademark infringement for potential trademark applicants is to come up with a unique name and to research similar marks in the USPTO database before filing for an application.
For example, when Bell Atlantic and GTE completed their merger several years ago, the new entity was named “Verizon.” Twenty years later, the name Verizon is well known – in part for its uniqueness. A unique name might not only express a company’s mission or vision – but also enable an easier research process with the USPTO. In Facebook’s case, a brand change to something such as “Metabook” might have been closer to their present evolutionary stage, yet would also require consideration of other existing entities of a similar name. Here, Meta likely had to research other similar marks within the same IC and make a determination about whether other “Meta” marks were substantially similar to its own.
As a new business attempting to put itself out into the world, it is important to come up with a unique name first. The second, and most important, step is to hire an attorney who regularly files trademarks and is familiar with the USPTO website. The attorney will perform the essential research required to ensure that your mark is accepted. That research will include a search of the Trademark Electronic Search System (TESS) database and sometimes, Google. Once the application is submitted, the USPTO may file an office action for the application if it believes the mark is too similar to other marks in the database. The office action typically contains reasons why the USPTO does not want to accept your mark. The most common reason is that the mark is substantially similar to another mark in the same IC. However, the attorney can make arguments showing that other marks are not likely to be confused with marks at issue due to geographical limitations, difference in goods or services offered, or saturation of marks in the same class, etc.
Forbes article on the deal with the South Dakota-based Meta Financial Group to obtain exclusive rights to all Meta trademark assets
CNBC article explores what the “Metaverse” means and the recent Meta virtual reality app, Horizon Worlds
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