It’s a fact that the “Facebook” name has become radioactive because the company did all sorts of bad things (Facebook denies doing some of the bad things and is very sorry about the others). Facebook likely realized this, too, and thus surprised no one when it changed its name to Meta last year, with the official line being that it wanted to reflect its bet on virtual reality and the metaverse. Unfortunately, there was already a small company named Meta, and it does not want to be associated with Facebook’s pungent reputation.
Meta.is, a small company which claims to have been operating in the immersive and experiential technology space since 2010, sued Facebook on Tuesday in New York federal court for allegedly violating the smaller business’ trademark rights to the “Meta” name. (To avoid confusion, we’ll call the smaller company “Meta.is” and the bigger 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. It argues that Facebook knowingly ripped off its entire business and lied about doing so to its face. Furthermore, it is now impossible to do business using the “Meta” name, Meta.is states, because customers believe its goods and services come from “toxic” Facebook.
Meta.is claims that Facebook ignored its federally registered trademarks—one of which it applied for in January 2016 and was granted in May 2020, while the other it applied for in January 2016 and was granted in May 2017. In addition, the smaller company stated that would be near-impossible for Facebook to claim that it didn’t know that there was another company named Meta.
According to Meta.is, in 2017 a Facebook executive attended one of its immersive experiences and wrote to JB Bolognino, Meta.is’ founder and CEO, and said that both should partner up on future work. The lawsuit claims that the two companies eventually did work together.
After Facebook adopted the name “Meta” in October of 2021, Meta.is says that it reached out to the big tech giant and told it about the alleged infringement. In response, Facebook reportedly told Meta.is that both companies offered “drastically different goods and services.” As told in the lawsuit, Facebook said that Meta.is offered “multi-sensory live experiences.” Facebook, meanwhile, was just “a social technology company.”
Yet, Meta.is claims that Facebook is doing the very thing it said it didn’t do by creating the same immersive experiences as Meta.is at the same events and venues. The smaller company says that Facebook is even working with the same creators and companies.
“Meta has been crushed by Facebook’s flagrant, unlawful conduct,” Meta.is said in its lawsuit. “Meta can no longer provide goods and services under the META mark because consumers are likely to mistakenly believe that Meta’s goods and services emanate from Facebook and that Meta is associated with the toxicity that is inextricably linked with Facebook.”
Gizmodo reached out to Facebook for comment on the lawsuit on Wednesday morning but did not receive a response by the time of publication.
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 “do raise concerns.” That doesn’t mean that Meta.is will triumph over Facebook, though, she said.
Tushnet pointed out that Meta.is bases some of its legal argument on the reverse confusion theory. This occurs when customers believe that the goods and services offered a newer player in the market (in this case, Facebook) are the true source of those services when they are, in fact, offered by an older player (in this case, Meta.is). While Meta.is argues that this is classic case of reverse confusion, Tushnet says that it’s not for a couple of reasons.
“First, reverse confusion isn’t usually available as a theory if you have a highly ‘descriptive’ mark, and to the extent that ‘meta’ is understood as shorthand for the metaverse, it seems pretty descriptive,” the professor explained. “The underlying idea is that the first person to use, say, ‘Boston Taxis’ for a service offering taxis in Boston shouldn’t be able to stop others from using those words to sell the same thing unless they are really, really well-known. And the theory of reverse confusion is that the plaintiff isn’t that well-known.”
In addition, Tushnet said that Meta.is doesn’t make clear how many people are using “meta” in the same space for similar things. In the case of a “crowded” market, there would usually be less protection for any given trademark, she said.
Meta.is might have also poked a hole in its own argument by describing itself as well-known in its industry. Tushnet says that if that’s the case, then influencers and artists are less likely to be confused by the names.
A lawsuit with these complexities could take years to resolve, but it’s not easy to predict what will happen.
“If a judge is convinced that FB/Meta is a bully preying on the weak, and if plaintiff seeks a quick injunction, then a judge could issue an early ruling that would give FB/Meta a big incentive to settle,” she said.