The fight over the “Meta” trademark heats up

As many readers know, in October of 2021 Facebook picked a new name for their company, namely “Meta”.  But it sort of looks like maybe somebody at Facebook did not do a good enough trademark clearance search back when the company was considering whether to use “Meta” or some other proposed mark as their new name.  Anybody who wanted to do so could have clicked around in October of 2021 in the USPTO trademark database and could have seen that two months earlier, an Arizona company called Meta PC had filed a trademark application for “Meta” for computers and several other computer-related goods.  (You can see the trademark application here in TSDR.)

When the Arizona company filed its trademark application, it filed it with a “use-based” filing basis, claiming to have been using the mark since at least as early as November 1, 2020.  On a quick glance at the record it looks like maybe they are not making this up.

Anyway, the existence of this trademark application is, of course, a stumbling block for Facebook, to say the least.  

Now it turns out that somebody filed a so-called “Letter of Protest” at the USPTO, trying to kill that the trademark application of that Arizona company.  (You can see the Letter of Protest here in TSDR.)  A Letter of Protest is a mechanism by which a interested member of the public can bring evidence to the attention of the Deputy Commissioner for Trademarks with the idea that maybe the Deputy Commissioner might pass it along to the Examining Attorney whose job it is to examine some particular pending US trademark application.  If the Deputy Commissioner decides that the evidence is worth passing along, then he or she passes it along to the Examining Attorney without saying who it was that filed the Letter of Protest in the first place.

Anyway, that is what just happened in the trademark application of this Arizona company.  The Deputy Commissioner just yesterday passed along a Letter of Protest to the Examining Attorney in that trademark application.

The Letter of Protest invites the Examining Attorney to look at a particular US trademark registration number 6239288 which issued on a trademark application that got filed on June 13, 2020.  (You can see that US trademark registration here in TSDR.)  The application is for the mark “Meta.” with a period on the end, and the goods are “downloadable computer software for capturing and storing screen data for the purpose of pattern recognition and machine learning.”

Now of course “downloadable computer software” for doing particular things is not at all the same thing as “computers”.  Computers are things that you can drop on your foot.  Downloadable computer software is somewhere in a cloud.  But whoever it was that filed the Letter of Protest tried to “bridge the gap”.  This is a type of trademark advocacy where the party trying to show a likelihood of confusion will point to several already-granted US trademark registrations in which some particular company is seen doing both things.  And indeed in this Letter of Protest what is provided are six US trademark registrations that show various companies that have goods of “computers” and that also, oddly enough, list “software” somewhere in their identification of goods.

The workflow within the USPTO is designed so that it is not easy to figure out who filed the Letter of Protest.  If you click around in the application file of this Arizona company, you can see the Letter of Protest itself but nothing about it gives any indication who filed the Letter of Protest at the USPTO.  If you or I were to go to the trouble to file a FOIA request at the USPTO asking for the details about who filed the Letter of Protest, I imagine the USPTO would cough up the cover letter, at which point we would see who the trademark practitioner is that mailed the Letter of Protest to the USPTO.  But I consider it a virtual certainty that whoever the Real Party in Interest is behind this Letter of Protest, they hired a “cutout”.  By this we mean they hired some trademark firm with which they had never had any previous dealings, asking that trademark firm to send the Letter of Protest to the USPTO.  And that trademark firm is probably under instructions to keep mum about who hired them.

But I can make an extremely confident guess as to who the Real Party in Interest is behind this Letter of Protest.  Maybe you can too.

One thought on “The fight over the “Meta” trademark heats up

  1. The choice of “meta” as the name for FB’s new incarnation has been met with snickers in Israel, as this is a transliteration of the Hebrew word for “dead”.

    The use of a cut-out is to be expected. I have never filed third-party observations in a US patent application without using a cut-out, although I have filed such observations in Israel myself.

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