BYE BYE FACEBOOK, HELLO META

Facebook announced last month that it’s changing its name to Meta. However, the rebrand may involve certain challenges for the social media giant.

A tech start-up based in Arizona, Meta PC, applied for “Meta” as trade mark in August 2021 and the Meta PC trade mark application covers a range of technology products including computer hardware and computer software in class 9. In addition, Meta PC claims to have been using the Meta trade mark in the US since 2020.

Whilst Facebook also filed its own application for “Meta” as a trade mark, it only did so in October 2021 (i.e. two months after the Meta PC trade mark application). Neither application has proceeded to registration yet, but it would appear that Meta PC has at least some leverage in light of the fact that its trade mark application was filed approximately two months before Facebook’s application.

However, that leverage is somewhat limited by virtue of the fact that the Meta PC trade mark application covers class 9 only and does not, for example, cover social networking services, online messaging and communication services, online retail services, advertising services and a number of other commercial areas that are central to Facebook’s business and revenue).

In the end, the most likely outcome is that Facebook will seek to secure the rights from Meta PC by offering to buy the trade mark from the company. In the alternative, the parties may agree to coexist peacefully if the parties can take steps to avoid any confusion between the small retailer of computer hardware/software and the social media giant. If buying the trade mark isn’t possible, and if coexisting isn’t possible, Facebook may try other strategies to overcome this obstacle e.g. it may seek to acquire even earlier rights in the US (i.e. by buying a third-party “Meta” trade mark in class 9 with a filing date earlier than 2020).

Briffa comment

It’s relatively rare for a household name to undergo a complete and total rebrand (although I remember Jif becoming Cif, and Oil of Ulay becoming Oil of Olay), but when it does happen there are a few lessons to be taken away.

Trade marks are valuable assets – By filing a trade mark application early, Meta PC has secured valuable leverage for itself. It will probably end up selling the trade mark to Facebook for a substantial profit.

Brand protection and rebranding are not risk free – No one is ‘entitled’ to legal protection for the new business or brand name they have just chosen. Even a company as wealthy and powerful as Facebook must go through the trade mark application process and run the risk that the application will be blocked, refused or opposed on the basis of a prior blocking mark. Therefore, a complete and total rebrand should not be undertaken lightly (particularly if you have spent years generating goodwill and building up brand/customer loyalty under your existing brand) and the cost/time associated with filing an entirely new set of trade mark applications, in multiple different classes/territories, should not be underestimated.

Search and strategise – However, if you have decided to start a new business/brand, or rebrand an existing business/brand, the ground work that you do in advance is crucially important. Check trade mark registers, domain register, company registers, news websites and social media websites for any ‘red flags’ (i.e. any evidence that there is someone out there already using the same/similar brand in relation to the same/similar products and services). If there is, it’s time to strategise (i.e. Is it possible to coexist, or buy prior rights, or seek cancellation for non-use? What other leverage do you have?). Even if there isn’t any obvious red flag, it’s still time to strategise. Think about key brand identifiers (i.e. what trade mark need to be protected?), key products and services (i.e. what classes need to be covered by the application?) and key markets (i.e. in which countries and regions is trade mark protection needed?).

Budget and get help! – Once you’ve decided on the new brand, the new marks, the classes and the territories, you need a plan of action. Rome wasn’t built in a day, so it’s often a good idea to spready out your costs by seeking protection for core marks, classes and territories only first, and thereafter expanding your trade mark portfolio as the business grows and you have profits to reinvest in the business. In addition to budgeting, there are a number of ‘tricks of the trade’ (e.g. availing of the priority period to minimize risk and spread out cost, managing portfolios of domain names and social media accounts/handles in conjunction with trade mark portfolios, and considering other IP assets such as copyright and design rights as part of the overall brand strategy), so it’s a good ideal to get help from a specialist IP advisor if you can.

Briffa are experts in all aspects of intellectual property law and practice. Our specialist lawyers manage contentious and non-contentious matters relating to trade marks, copyright, designs, patents, domains data protection and commercial contracts. If you would like to arrange a free consultation with one of our lawyers, please get in touch.

Written by Éamon Chawke, Partner