Facebook faces a trademark lawsuit for its META rebranding

As it is well-known, Facebook rebranded itself as a company to META in 2021. The main goal was for this name to fit better with the future development of the company, and in particular with the emergence of the metaverse as a new virtual world.

Facebook filed a trademark for META, and this blog has already discussed the probabilities of potential legal conflicts taking into consideration numerous early registered trademarks for META around the world including in the US.

So it is of no surprise that a trademark infringement lawsuit has been filed in New York against Facebook by a company named METAx LLC.

This company claimed the use of the META brand since 2010 in relation to VR and augmented reality technologies. What’s more, the company owns two earlier US trademarks:

No. 5,194,332, registered in class 35: Organizing and holding special events for commercial, promotional or advertising purposes; Event planning and management for the marketing, branding, promotion or advertising of the goods and services of third parties; Social media strategy and marketing consulting focused on helping clients create and expand their product and brand strategies by building virally engaging marketing solutions; Special event planning for business purposes; Arranging, organizing and conducting live interactive marketing promotional events for business promotional purposes, and

No. 6,055,841, registered in class 41: Media production services, namely, video and film production; Entertainment, namely, production of community sporting and cultural events using digital, virtual and augmented reality filmmaking and interactive displays of lights, sound and motion; Special event planning for social entertainment purposes.

According to METAx, Facebook has been aware of its business and trademarks since 2017 when there was communication between both companies.

To what extent this lawsuit can be successful depends on the particular facts. What is for sure is that Facebook can face more similar conflicts in the future taking into account the bunch of early registered Meta trademarks for similar goods and services. One possible defensive strategy for Facebook could be to claim a low-distinctive character of the word META at least for services related to the metaverse.

In general, the main rule when someone wants to file a trademark is to check for earlier rights and to avoid possible conflicts which can lead to complex lawsuits and a lot of expenditures. Of course, there is another strategy, that however requires deep pockets for out-of-court agreements.

Source: Reuters.

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The English Premier League filed trademarks for virtual goods that will be offered in the future metaverse

More and more companies have started to adapt their business strategies considering all-new blockchain technologies (NFT – non-fungible tokens) and the future metaverse – a digital world that will mimic the real one.

What draws our attention from an intellectual property point of view is that many big companies have started to file trademark applications for a variety of so-called virtual goods such as virtual burgers, virtual clothes, virtual shoes, etc.

At first glance, this may sound abstract and even silly but behind the scenes, it can be a completely new business opportunity. Imagine a virtual world where every avatar will be able to buy unique digital goods in the form of NFTs in order to support its social status. This can be a huge new opportunity for many companies to expand their sales into a new category representing virtual goods. And because the goods will mimic the real ones, they will be branded which in turn requires trademark protection. This will help companies to control who and how can offer virtual goods with their brands. This means profit.

In light of this,  The English Premier League filed the following two US trademarks for goods such as – downloadable virtual goods for use online and in online virtual worlds; Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, sportswear, football shirts, eyewear, bags, sports bags, backpacks, sports equipment:

In that way, the English Premier League will be able to monopolize ist signs for use in the metaverse securing a tool for fighting against infringers.

There is a good chance such intellectual property protection strategy to become a key factor for the future virtual business models.

Source: Findbold

McDonald’s filed trademark applications for virtual food and drinks

Metaverse is quite a trendy topic these days especially after Facebook announced its plans to develop this new virtual world as fast as possible.

Probably you will ask what Metaverse is after all. According to Wikipedia – A metaverse is a network of 3D virtual worlds focused on social connection. In futurism and science fiction, it is often described as a hypothetical iteration of the Internet as a single, universal virtual world that is facilitated by the use of virtual and augmented reality headsets.

In light of that, more and more companies start to consider options for the protection of their intellectual property assets in the future Metaverse. Recently this blog has posted an article about Nike’s trademark applications for virtual clothes and sneakers.

Now another global player McDonald’s has filed 10 US and 3 EU trademarks for McDonald’s brand and McCafe for the following classes of goods and services:

• 9 – Virtual food and beverage products. Downloadable multimedia files containing artwork, text, audio and video files and non-fungible tokens.
• 35 – Online retail services featuring virtual goods.
• 41 – Entertainment services, namely, providing on-line actual and virtual concerts and other virtual events.
• 43 – Operating a virtual restaurant featuring actual and virtual goods, operating a virtual restaurant online featuring home delivery.

The main purpose of such applications is to secure trademark rights for virtual goods or services that will be offered for sale to users’ avatars through blockchain technology.

This could sound silly now but the expectations are that in the future many people will want to possess such items for their virtual avatars because in that way they can persuade a social status or differentiation. At some point, this can be an advantage if Metaverse becomes a place both for business and entertainment.

Source: Mason Hayes & Curran LLP – John Milligan and Gerard Kelly

Facebook filed a trademark for META but whether this will be a successful registration

Recently Facebook has announced that the mother company behind its services related to Facebook, Instagram WhatsUp, Oculus will be renamed META.

Apart from all corporate and marketing arguments, it is interesting what the case of trademark protection is. Although company names are registered in relation to the Commercial Law, most of the companies prefer to have an identical mark for the same name.

This is the case with Facebook too. They filed an application for a US trademark META in classes 9, 28, 35, 38, 41, 42, 45.

The main question is to what extent they will successfully register this name.

One brief trademark search for META for the same classes shows that there are 2 988 filed or already registered trademarks for META around the world. That’s a lot.

What’s more, the US company NFT Technology Inc filed an application for META № 97097845 in class 9 – software on the same day when Facebook did that.

It is interesting whether Facebook did a preliminary trademark clearance search and analysis. Taking into account the similarity and identity between the goods and services and the signs that are already registered or filed, there are possibilities for many oppositions if Facebook tries to register such a trademark globally.

In one word, although the proclaimed Metaverse can be a new big space for business and communication, the IP universe can become quite small for Facebook from a trademark protection point of view.

But is it possible for Facebook to be forced to stop using META in case of a conflict?

This depends on many circumstances. If Facebook uses this name only as a corporate name probably there will be no problems. But if the company starts offering products or services under such a mark, it could be an issue taking into account all available earlier trademarks for META.

Time will tell whether trademark conflicts will arise or not. What is for sure is the fact that choosing a trademark for global use is really challenging these days and most likely will become even more challenging in the future.

Nike is preparing for the Metaverse with trademarks for virtual clothes and shoes

Facebook, one of the biggest social media networks in the world, has announced the launch of its new project called Metaverse. The idea behind it is very similar to the novel Ready Player One by the American author Ernest Cline.

Metaverse is supposed to be a virtual place that replicates entirely the real world. Everyone will have an avatar and will be able to communicate, work and buy products or services within it.

For the time being, we are far away from the finalized product, which could be potentially controversial, but nevertheless, some companies start to prepare their business model for this new development.

Recently, Nike has filed several US trademarks such as Air Jordan, Nike, Just do It, and more, which target virtual clothes, shoes, etc.

One of the assumptions is that every user of the Metaverse will be able to buy virtual products for its avatar, including clothes, cars, houses, and so on, in order to show social status, for instance. Such products can be unique, especially in the light of blockchain technology. What’s more, it is logical that these virtual products can be branded as their real equivalents.

So from that perspective, some innovative companies as Nike have started to prepare their business strategy for the new virtual future, including their IP portfolios.

It is interesting how Nike specified the goods in class 9 – Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds.

There are no virtual clothes or shoes etc in the Nice Classification that is responsible for the list of goods and services necessary for the trademark application process. Probably this is the reason why Nike identified these products as computer programs, a term that is part of the Nice classification.

It is a fascinating idea whether the Nice Classification will undergo changes in the future in order to cover all sorts of new types of products and services that will emerge if Metaverse becomes a reality.