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.

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One crucial thing before filing a trademark in order not to waste your money and time

When you have your own business sooner or later you will start thinking about your branding and how to protect it from unfair use by competitors.

All of this is normal because when one business takes off, gaining some traction and achieving some success, other market participants will try to take advantage of its reputation and recognizability amongst the consumers. 

From that perspective, every business owner should be prepared with a proper trademark protection strategy.

Building a good brand name is not an easy task. From one side, such a name should follow so many marketing requirements, from the other the name should be unique, that is to say, it must not be registered as a trademark by someone else.

This, in particular, is essential. If your brand is already registered with the Patent Office of the country where you are operating as a business, this means that you can become a trademark infringer even without suspecting this.

It can be a trap because in such cases a lawsuit can be really expensive and in the end, you probably will need to change your beloved brand.

What is the solution in such situations? Well, it is a simple one, just check the official trademark database of your state Patent Office. This will show you whether there are earlier marks or not.

What do you need to know when you conduct such searches?

In brief, the things that can be bear in mind are:

1. Every trademark is valid only for the goods and services for which it is registered. This means that when you compare two marks they have to share common G&S. If this is the case it could create a problem. All goods and services are grouped in classes called Nice Classes. You can classify your G&S using this free tool TMCLASS.
2. Trademark protection scope covers not only other identical signs but similar too. For example, a trademark INEX for bicycles can stop a later mark INIX for bicycles.
3. Assessment of identical marks is relatively easy. Both marks should be absolutely identical in every aspect. They have to be for identical G&S too.
4. Assessment of similar marks, however, could be tricky. This requires in-depth legal knowledge and understanding of the case law in the relevant country.

It is advisable, such searches to be done through the brand-building process because this will allow you to make modifications to the brand before launching and filing a trademark application. It can save you a lot of money and time. 

In case you want to learn how to do trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand you can check this Udemy Complete course on trademark search.

One key moment for every brand-building process

Trademark search is one of the most important parts of the brand-building process, although sometimes it is underestimated.

Most people think about brand building only as a marketing process where different marketing specialists develop a new brand name based on a variety of marketing requirements. 

That’s true up to a point but it’s not the whole picture. Why?

Well, the brief answer is that a good brand name doesn’t mean automatically that you can use it without legal obstacles.

What do I mean?

Let’s say, for example, that we have a company that hires a brand-building agency to create a new brand name for its business. The agency does the job and delivers the required brand. From that point we have two possible scenarios:

1. The company applies for a trademark before the local Patent Office and the brand is registered as a trademark without problems. However, another option here is the brand to fail registration because there are identical and similar trademarks for the same name that are already registered by other companies.
2. The second scenario is if the company doesn’t care about the registration of a trademark in which case the company uses its brand seamlessly, relying on pure luck. In this case, however, it is possible for the company to be accused of a trademark infringement by an owner of a registered identical or similar trademark if such exist.

All of that can happen because there is no preliminary trademark search in the brand building stage which to show whether or not earlier registered trademark rights exist.

Although you can use your brand without registration as a trademark, sometimes this could be a risk because it can evoke potential legal conflicts. Even without such problems, the brand owner will be in a more difficult position to defend its brand against infringers in the future because of a lack of registration.

So taking into account these options, trademark search is a vital part of the brand-building process. If you implement such a search in every stage of the process, you will be able to avoid conflicts and reduce risk to your business. Such searches will “red flag” possible issues in the early stages of your business development, which will give you more time to react properly.

In case you are interested in learning how to do trademark searches on your own, check this new Udemy Complete course on trademark search, where you will learn how to implement it for the territories of the US, Canada, the UK, Ireland, Australia and New Zealand.

5 key moments before to apply for trademark protection

Many people believe that the most important part when you want to register a trademark is the registration procedure before the Patent Office.

This is a wrong view for the most part. There are some crucial moments regarding every trademark protection that have to be taken into account even before filing an application. This can define to what extent you will be able to register and use your trademark successfully.

1. Define what type of trademark you want to register:
   • Word mark – in that case your mark will be registered only as a word. For example: NIKE.
   • Combined mark – this mark consists of both word and graphic parts. For example the Adidas’ mark:
   • 
   • Figurative marks – they cover only graphics without text. For example:
   • 
   • Three-dimensional marks. They consist of the product’s forms. One of the most well-known examples of such a trademark is that of Coca Cola’s bottle:
   • 
   • Other trademark types such as sound marks, smell marks etc. Bear in mind that you can choose only one type of trademark in your application. If you want to register all of them you need to file separate applications.
2. Be sure that your sign is not excluded from trademark protection. Trademark law prohibits registration of signs that cannot serve as a source of trade origin. They can be:
   • clearly descriptive signs;
   • signs that are not distinctive;
   • deceptively misleading signs;
   • geographical places of origin of goods and services;
   • signs consisting of flags, arms and other official emblems of states or international organizations which are registered in accordance with Article 6 of the Paris Convention;
   • signs contrary to public policy or accepted principles of morality.
   • etc.
3. Define the classes of goods and services for which you want your trademark. Every trademark application includes a list of the so-called Nice Classes of goods and services. The scope of trademark protection is valid only for specified goods and services. This means that your monopoly over the sign is limited to those classes. One simple way for classification is to use the TM Class tool.
4. Do a preliminary trademark search. This is absolutely critical moment. You need to check the Patent Office’s trademark database whether there are identical or similar trademarks for the same classes of goods and services. If this is the case it could mean that third parties can oppose your trademark or even sue you for a trademark infringement in case you start using the mark.
5. Consult a registered Trademark Attorney. The legislation in most of the countries allows a trademark application to be filed personally by the applicant. This can save some money from attorney’s fees. However, this hides some traps. In case you don’t have the necessary legal knowledge of how to go through the registration procedure it can lead to a refusal or opposition against your trademark. From that perspective you can lose not only your application but to waste some money. So you need to think carefully to what extent you are prepared to do the job and whether you need help in order you to avoid legal pitfalls.

More or less these are some of the main steps that you need to consider before filing a trademark application. They can save you time and money if implemented well.

In case you want to learn how to do a preliminary trademark search on your own, in order to select the best brand name for your business, check this new Udemy Complete course on trademark search.