Facebook, “Meta” & the Importance of 1(b) Trademark Applications
Photo by Markus Spiske
On October 28, 2021, one of the largest and most well-known brands, Facebook, adopted a new company brand—with CEO Mark Zuckerberg announcing that “our company is now ‘Meta.’” The Facebook name isn’t going away, but the company’s primary branding is undergoing an enormous shift to its new “house mark” (a mark that identifies the provider of a wide variety of goods or services, which are often themselves identified by a separate trademarks). Aside from the public having its own commentary on this shift, perhaps the company most affected is Arizona-based Meta PC LLC, a custom PC manufacturer who, on August 23, 2021, filed a trademark application for its own company name—META.
Of course, this creates some difficulty for the social media giant, as trademark applications exist in a “first-to-file” regime. Meta PC won the race to the Trademark Office, so the question becomes: what does Facebook (we’ll just call the company “Facebook” in this blog post to reduce confusion) do now? Facebook has a couple options:
File its own plethora of trademark applications (it already filed one) to try and secure the branding as best it can (although it runs the risk of receiving many initial refusals—many of which will likely cite Meta PC’s application as a confusingly similar pre-existing mark). Facebook will then need to decide whether to file responses to argue in favor of its applications’ distinctiveness, seek a “consent agreement” from Meta PC to register its own marks, or seek to cancel Meta PC’s trademark application. Since Facebook and Meta PC’s applications will be identical (META v. META), and since the applications will likely cover very similar goods and services (Meta PC’s application covers, among other things, computers, tablets, computer peripherals and components, servers, networking equipment, and “all related accessories”) it will be difficult for Facebook to prevail with a simple argument that the marks are dissimilar. Hence, the best way forward would be to either seek a consent agreement from Meta PC or to seek cancellation of Meta PC’s application (if it can prove that Meta PC filed its application fraudulently, or that Meta PC isn’t the true owner of the application, for example). The latter decision would likely result in a PR nightmare for Facebook, hence, a consent agreement would be the way to go under this option.
Facebook could avoid the uncertainty and headache of the processes outlined above by simply purchasing Meta PC’s trademark application ahead of filing further applications. This would avoid the need for a consent agreement as well, as Facebook would already be the owner of the earlier-filed META trademark.
Meta PC seems to be aware of these options, for various reports show it requiring $20 million from Facebook to cover its trademark assignment and rebranding costs. Meta PC doesn’t seem to have been negatively affected by Facebook’s recent announcement, however, as it posted a doctored photo of Mark Zuckerburg holding a Meta computer, released a video jokingly claiming that it is changing its name to “Facebook,” and its social media following has reportedly increased by 5,000% in the past week.
Facebook could have avoided this issue by filing what’s known as a “1(b)” or “intent-to-use” trademark application—an application where the applicant states that although it isn’t currently using the applied-for mark in commerce as of the filing date, it “intends” to use the requested mark in the near future. These applications are instrumental in seeing that good ideas are preserved as a “bookmark” in the trademark filing system, which will prevent other applicants from winning the race to the Trademark Office during brand development. 1(b) applications take a bit longer to process, as further filings and fees are necessary to secure registration, but they are an insurance policy that can, in many circumstances, give the applicant peace of mind that its brand development dollars aren’t going to a brand that it will be prevented from eventually securing. Facebook likely didn’t file a 1(b) application to avoid publicity of its rebranding efforts, but given that Facebook currently owns 147 live trademark applications and registrations, a simple application for “META” likely would not have incited too much publicity anyway. At any rate, hindsight is 2020.
Although it remains to be seen how Facebook will deal with this unfortunate, yet foreseeable branding issue, Meta PC is undoubtedly enjoying an ever-increasing uptick in free publicity and brand recognition. Your move, Meta . . . err, Facebook!
For more information on this article and this topic, contact Charles Wallace.