It is a fact that the name “Facebook” has become radioactive because the company has no all kinds of wrong things (Facebook denies doing some of the wrong things and is truly sorry for others). Facebook probably realized this too and therefore didn’t surprise anyone when it changed name at Meta last year, with the official line being that he wanted to mirror his bet on VR and the Metaverse. Unfortunately, there was already a small company called Meta, and it doesn’t want to be associated with Facebook’s hot reputation.
Meta.is, a small business which claims to operate in the immersive and experiential tech space since 2010, Facebook sued Tuesday in federal court in New York. for supposedly violating small business” trademark rights to the “Meta” name. (To avoid confusion, we’ll call the small business “Meta.is” and the larger Meta “Facebook” in this article.)
The company is seeking a permanent injunction preventing Facebook from using the “Meta” name and an undisclosed amount in damages. He argues that Facebook knowingly ripped off his entire business and lied about it to his face. Moreover, it is now impossible to do business using the name “Meta”, says Meta.is, because customers believe that its products and services come from “toxic” Facebook.
Meta.is claims Facebook ignored its federally registered trademarks—a which he requested in January 2016 and was granted in May 2020, while the other he applied for in January 2016 and was granted in May 2017. Also, the small company said it would be almost-impossible for Facebook at pretend he didn’t know there was another company called Meta.
According to Meta.is, in 2017 a Facebook executive attended one of his immersive experiences and wrote to JB Bolognino, founder and CEO of Meta.is, and said the two should partner for future works. The lawsuit claims the two companies eventually worked together.
After Facebook adopted the name “Meta” in October 2021, Meta.is says it reached out to the big tech giant and told them about the alleged offense. In response, Facebook reportedly told Meta.is that the two companies offered “radically different goods and services.” As stated in the lawsuit, Facebook stated that Meta.is offers “live multi-sensory experiences”. Facebook, meanwhile, was just a “social tech company.”
Yet Meta.is says Facebook is doing exactly what it said it didn’t by creating the same immersive experiences as Meta.is at the same events and locations. The small company claims that Facebook even works with the same creators and companies.
“Meta was crushed by Facebook’s flagrant and unlawful conduct,” Meta.is said in its lawsuit. “Meta can no longer provide goods and services under the META brand because consumers are likely to mistakenly believe that Meta’s goods and services emanate from Facebook and that Meta is associated with toxicity inextricably linked to Facebook.”
Gizmodo contacted Facebook to comment on the lawsuit on Wednesday morning, but did not receive a response as of press time.
Rebecca Tushnet, a professor of intellectual property law at Harvard Law School, told Gizmodo in an email that a complaint only tells one side of the story, but that the allegations made by Meta.is “raise concerns.” That doesn’t mean Meta.is will triumph over Facebook, however, she said.
Tushnet pointed out that Meta.is bases some of its legal arguments on the reverse confusion theory. This happens when customers believe that the goods and services offered by a newer player in the market (in this case, Facebook) are the real source of these services when they are, in fact, offered by an older player (in this case , I keep quiet). While Meta.is argues this is a classic case of reverse confusion, Tushnet says it’s not for several reasons.
“First, reverse confusion is generally not available as a theory if you have a highly ‘descriptive’ brand, and since ‘meta’ is understood as shorthand for the metaverse, it seems pretty descriptive,” said explained the teacher. “The idea behind it is that the first person to use, say, ‘Boston Taxis’ for a service offering taxis in Boston shouldn’t be able to prevent others from using those words to sell the same thing. unless they’re really, really well-known, and the reverse confusion theory is that the plaintiff isn’t that well-known.
Additionally, Tushnet said Meta.is does not specify how many people use “meta” in the same space for similar things. In the case of a “crowded” market, there would generally be less protection for a given mark, she said..
Meta.is could also have punched a hole in its own pitch by describing itself as well-known in its industry. Tushnet says if this is the case, influencers and artists are less likely to get confused by names.
A lawsuit with these complexities could take years to resolve, but it’s not easy to predict what will happen.
“Ia judge is convinced that FB/Meta is a bully who preys on the weak, and if the plaintiff asks for a quick injunction, then a judge could issue an early ruling that would give FB/Meta a big incentive to settle,” she said.