By: Justin McNaughton, Partner
Sometimes you do all the right things, and it isn’t enough. Sometimes you think you’ve done all the right things, but maybe you’ve missed something.
METAx LLC has been operating in the augmented reality space since at least 2015. According to the records at the United States Patent and Trademark Office, METAx filed trademark applications to register in Application Serial No. 86884251 for the following services:
media production services, namely, video and film production;
entertainment, namely, production of community sporting and cultural events using digital, virtual and augmented reality film making and interactive displays of lights, sound and motion; and
special event planning for social entertainment purposes.
In addition, in Application Serial No. 86980988 for the following services:
arranging and conducting special events for commercial, promotional or advertising purposes;
event planning and management for marketing, branding, promoting or advertising the goods and services of others;
social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions;
special event planning for business purposes; and
organizing, arranging, and conducting live interactive marketing promotional events for business advertising purposes.
Each of these applications were filed on January 22, 2016, granted a federal trademark registration and claimed a first use date of May 1, 2015. Keep these dates in mind because in the U.S., generally, the first person to use a trademark has superior rights in the trademark (regardless of whether it is registered), but the first person to file can also have superior rights. Finally, long periods of coexistence can undermine a trademark owner’s ability to enforce trademark rights.
Years after these filings, in 2021, along came Meta Platforms, Inc. – also known as Facebook. At the time of this post, Meta Platforms had more than a hundred U.S. trademark applications and a few registrations incorporating the name META in the U.S. alone.
I heard about this conflict when METAx sued Meta Platforms in New York a couple of weeks ago. When I first heard about this case, I thought it was pretty brazen that Meta Platforms would decide to adopt an already federally registered trademark for arguably similar services and felt the unfairness of what that represented. As I looked into Meta Platform’s filings, I found that they did some of the usual games big companies play when they try to hide an upcoming rebrand. For example, Meta Platforms began filing trademark applications in Jamaica back in the summer of 2021. It isn’t that Meta Platforms cares about Jamaica, but that Jamaica has a treaty with the U.S. that allowed Meta Platforms to use its Jamaican filing date as the effective filing date of its later U.S. trademark applications. Clever, but it still isn’t enough to get back in front of METAx’s 2015 date or even its 2016 filing date.
As I scanned through Meta Platforms’ trademark filings, the vast majority are still applications so the few registrations it owns stand out. The U.S. Patent and Trademark Office is nearly a year behind on processing trademark applications, so it struck me as odd that Meta Platforms would already have any trademarks registered. However, it does:
METAVR, Serial No. 87676177 – Registered in 2018 for “computer software for modeling and visualization of geospatial environments” with a first use date of September 30, 1996 .
METACAFE, Serial No. 77074373 – Registered in 2007 for among other things, “webcasting services; online broadcasting programs over the internet or other communications networks; streaming of animation, video, sound, graphics, presentations, images, modeling, website content, motion pictures, and entertainment-related multimedia content via the internet or other communications networks” with a first use date of June 30, 2004 .
METABOOK, Serial No. 86968380 – Registered in 2017 for “downloadable digital application software for providing access to electronic publications; computer software platform for providing downloadable electronic publications” with a first use date of December 2, 2014 .
META PREVIEW, Serial No. 86627527 – Registered in 2017 for “software for displaying augmented content and for creating digital content used in connection with digital glasses” with a filing date of May 12, 2015 and a first use date of July 1, 2017.
META 2, Serial No. 86906559 – Registered in 2017 for “software for displaying augmented and virtual reality content and for creating digital content sold as an integral component of digital glasses; kits comprised of digital glasses that display augmented and virtual reality content that contain depth-sensing cameras used for creating digital content, software for displaying augmented and virtual reality content and for creating digital content sold as an integral component of digital glasses, external computer hard drives, USB cables and power cables; software for displaying augmented and virtual reality content and for creating digital content used in connection with digital glasses” with a filing date of February 12, 2016 and a first use date of December 23, 2016.
The last one is not really earlier than METAx, but it is close and has coexisted with METAx for a long time so it makes the list. At some point during 2020 and 2021, a company named Beige Key LLC acquired all of these companies. Days after Mark Zuckerberg made his announcement that Facebook was changing its name to Meta, Beige Key recorded assignments of all of these companies to the new Meta Platforms. And with those assignment recordings, Meta Platforms acquired rights in the METAVR name back as early as 1996. More importantly, METAx should have known about METAVR when it adopted the META trademark and moved into the augmented reality space.
What I initially thought might be corporate trademark bullying, actually looks like it was some pretty clever and expensive trademark maneuvering. METAx may have missed a few things in its own trademark diligence back in 2015 when it adopted the name META. I tip my hat to the company formerly known as Facebook because it seems like they may have shifted trademark reality.
