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Trademark Implications in the Metaverse: Meta vs Meta

by Patents Integrated
November 17th 2021

Facebook made waves in late October when CEO Mark Zuckerberg announced that the company would be changing its name to Meta to reflect its growing focus on the metaverse. Interesting idea, but it tu... More

Hello and welcome to the novel and non obvious podcast where we discuss the intellectual property topics impacting the startup world. My name is Yoriko mori to the host of this podcast and the founder of patents integrated today we're gonna be discussing the facebook name change from an I. P perspective. So there are various times in your company's life when a name change is in order for example you started with a complicated name and need something simpler and more memorable. A famous example of this is Anderson consulting. They became accenture or another one that's familiar to all the kids and teenagers in the world. Standard electronic games. So that is now Sega, another one that is very close to home for me is actually the official name of my company is so many consulting. It's a japanese word with a very specific meaning to me, a japanese person. People kept mispronouncing it all the time and it was just not memorable and so we had issues.

So in talking with a friend who is a business advisor, she suggested that I put in something about patents and that's how we came up with the name patents integrated. So I rebranded about a year and a half after I started so many consulting. Another way your company may have outgrown its original name might be because maybe you broadened your product offerings. For example a famous name change for this reason is google whose parent company became alphabet because they represent from a to Z all sorts of things. Another one that simplified their name as Snapchat that became snap because they're more than just a single product. Another reason why you might want to change your company name is because you need a brand refresh for some reason or another, for example, the company Philip Morris that makes cigarettes is now Altria, especially after all of the bad press that they got for promoting smoking.

Another one might be weight watchers. So now they are W W because having weight in your company name isn't all that cool anymore and there are other reasons why you may no longer want to use the original name, for example. World Wrestling Entertainment used to be World Wrestling Federation. So WWF, but they got into trouble when World Wide Fund for Nature or better known as the World Wildlife Foundation with the famous panda logo, sent them a cease and desist letter. So they changed to go ahead and change their name to W W E. Another reason might be a stigma associated with a particular name or a particular word in your name. For example, Kentucky fried chicken no longer wanted to use fried in their names. So they became KFC in a local company here in Denver who started off as boogaloo beds. So they make sensory control, essentially like a canopy bed for kids with sensory issues.

Well, the word boogaloo has been taken over by certain, not very wholesome crowds that do riots and that sort of thing. So they rebranded as cubby beds and they're doing very well here. So as you've probably seen the company formerly known as facebook hinted back in mid october that they will be changing their name to better reflect their evolving business strategies. And then they officially announced a name change to meta in late october. So when you're a global brand like facebook, the name change process is really complicated. So even if you have a minor army of attorneys that can help you through the paperwork, it's complicated. One of these complications of course is intellectual property. So let's look in general at the I. P implications of a corporate or product name change first. You want to make sure that the name you pick is original and memorable. There are lots of branding specialists that can help you with that.

You can do market studies and you can do discovery groups and all sorts of research. And really if you are a single person founder or a small early startup, a quick google search can help you check whether a specific name is already in use. Another good approach will be to use a service like name checker to see whether certain U. R. L. S. Or social media handles are available and that can be a good indicator of whether or not a particular name is available. For example, in certain contexts, I've used this service in the past and I've been told things like the shorter your name or the shorter the handle or the shorter the U. R. L. Like a four letter, a five letter U R. L. You're pretty much not gonna get it unless you pay a lot of money. So it kind of makes me wonder how much facebook may have paid for the mera dot com U R L. But that's a totally different story. Second, you want to see whether the name you want to use has been protected as I.

P by someone else. If you are a U. S. Company, the USpto trademark electronic search system or test is a good place to start and if you are a global company, you may want to look in other jurisdictions as well. And third, if the name you want to use appears to be original and free to use, you should make sure that the name you choose is protect Herbal, for example, you might use the tM superscript on the name or file for an official trademark registration in the jurisdictions in which you do business. If you can protect the name using a trademark registration, then you can prevent others from using the name in your same market. One thing to remember is that a trademark must always be used as an adjective like I want to send a package by Fedex career or can you get me a Starbucks Coffee where Fedex and Starbucks are used to describe the type of career and coffee that you want now for a startup company.

The actual process of changing the name is a multi step process but it's fairly well defined. There are articles out there that you can find with checklists. For example, you will need to file articles of amendment within the state of your inc. You may need to file appropriate paperwork with your city or county state country government related to any business licenses or tax filings. You will likely need to amend your existing contracts with third parties to reflect the correct name. So if you have a lot of agreements like contractor agreements, nondisclosure agreements, consulting agreements, insurance etcetera, if you have changed the corporate name then you will likely need to change the company that is named in these contracts as well. You have been keeping track of your business agreements right. Another step that you will likely need to take is to update any documentation related to asset ownership such as lisa's assignments and even intellectual property filings.

Another thing that you might need to do would be to update any internal documents like employment contracts. You should also check with your bank to see what documents they require to continue serving your business under your new name and of course you need to notify your customers and create new branding material such as your website. Maybe send out a press release, change your marketing documents and other collateral like business cards. So it's not a cheap process and it can take time. Some of the processes can be a little bit different if you choose to do a doing business as or a D. B a name to your company rather than change the actual corporate entity name. Now there are various other issues that may be involved with the name change in your specific situation so you should definitely talk with an experienced business attorney so that you don't miss anything. So now let's go back to the facebook name change the facebook attorneys waited to file the trademark application for the meta logo and name until october 28th, which is when the official name change was announced.

Now, given the super specific definition of the goods and services associated with the trademark applications, it looks like facebook likely will have a good chance of obtaining a registered trademark. Now that doesn't mean that there won't be challenges along the way. There have already been a ton of new trademark registration applications at the U S. B T F. Or similar word marks as made up. And there will likely be court battles in the coming months for infringement accusations related to existing trademark registrations that include the word made up. So facebook actually has a long history of I. P. Filings for example, facebook's first trademark filings date back in november 2006 when they filed for a standard character mark for F B 00. K. I think it's pronounced F. Book that was related to the category of computer software development tools for social networking among other uses. Now that name didn't stick obviously. And this mark was abandoned in 2007 when multiple trademark applications for the full word facebook software were filed and the rest is current history.

As of today, facebook inc has made over 300 U. S. Trademark filings and about 6500 U. S. Patent filings are assigned to facebook. Now these numbers do include trademark and patent filings originally owned by companies acquired by facebook. And I'm sure these numbers at least triple or quadruple when you include international filings. So I. P. Is obviously important to facebook so there will likely be a flurry of assignment record. Ations and amendments for the various I. P. Assets currently owned by facebook to be transferred to made up while the assignment recordation process is relatively simple. With the US patent and trademark office amending ownership of international I. P. Assets can be a bit more complicated because of requirements for things like what signatures not just electronic and other actual paperwork rather than electronic paperwork. Also just think of the expenses involved in changing the signage, building, software, hardware assets and marketing collateral.

The cost will be mind boggling entities associated with the facebook management had already owned the domains meta dot org and meta dot com from before. Although various social media handles were already taken by others according to the U. S. B. T. O. The earliest trademark to the word meta that is still enforced is for a preparation for destroying snails and molluscs that was filed back in 1938 and renewed most recently in 2020. So it's still enforced. And as I mentioned earlier, there's been a plethora of trademark applications for the word meta for using a variety of context. Since the announcement by facebook of the name change in mid october. So that's kind of the trademark equivalent of cybersquatters for you are else the bottom line is company name changes are not for the faint of heart. For example, for me, I didn't even change my last name when I got married because I was daunted by the paperwork.

So when you are deciding on a company name, do your research so that you can hopefully get it right the first time. And also hopefully if you ever have to do a major rebrand, you are a multi billion dollar company that can afford your own private army of attorneys to guide you. We hope you enjoyed this episode of the novel and non obvious podcast. Feel free to send us comments or suggestions for startup and I. P related topics you'd like us to discuss on this podcast at info at integrated dot com. Our producer is Joel Davis of analog digital marketing specialist is tim Sprinkle of layup content. Our theme music used with permission is the workday Takata from a Life in a day, composed by Sherry's later and performed by Michelle Stanley influence, Jeff look watch on guitar and nursery limoncello. Here's our obligatory disclaimer. The content of this podcast is information only and not intended to be legal advice. The novel and non obvious podcast is a production of patents integrated and all rights are reserved. See you next time.

Trademark Implications in the Metaverse: Meta vs Meta
Trademark Implications in the Metaverse: Meta vs Meta
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