MetaX Wants Its Name Back, And It’s Suing Facebook to Get It
Justin “JB” Bolognino, the founder of MetaX LLC, a virtual reality business, was in Las Vegas when he found out that Facebook was changing its parent company’s name to Meta Platforms.
“My phone was just blowing up with text messages, people going, ‘Oh my effing God. What the hell? What the hell? What the hell?’” Bolognino told Entrepreneur over the summer.
So after what documents say was more than eight months of failed negotiations over names and trademarks with Facebook, now owned by Meta Platforms, MetaX filed a lawsuit in the Southern District Court of New York in July.
MetaX has had “Meta” in its name since 2010, his suit claims. MetaX is being represented by Pryor Cashman, a New York-based law firm.
(Meta Platforms did not respond to requests for comment on this story.)
MetaX is one of a few companies with “Meta” in its name that has publicly filed a lawsuit (or spoken out about doing so) over Facebook’s rebranding to Meta Platforms.
Many suits of this type end up settling, but Bolognino has repeatedly implied his goal is much bigger: He wants to push Meta Platforms, a company that brought in $117 billion in revenue in 2021, into reversing its global rebrand — at least for the virtual reality industry.
“We are filing for an injunction, and that technically, that is what that means,” Bolognino said. “It’s not to change their name, it’s to prevent them from using their name in this industry.”
Still, Julie Tolek, a trademark attorney and head of the trademark department at Caldwell Intellectual Property Law (who is not involved in this case) told Entrepreneur that a small company like MetaX winning a trademark suit from a company as large as Meta Platforms would be difficult.
But it appears Bolognino could be attempting to do the impossible — a veritable trademark David vs. Goliath.
What’s in a name?
Bolognino created MetaX in 2010. The company provides marketing, strategy, and production to brands with immersive storytelling elements, such as augmented reality or interactive installations. He said he was inspired to create the company because of his love of live music and seeing digital artists perform.
Related: What Is the Metaverse and Why Is It Important to Entrepreneurs?
“[The company is] about just making sure that we, as a brand, Meta, and also these artists were … getting the recognition, payment, and IP rights that we deserve,” he said.
In its lawsuit, MetaX claims Meta Platforms is working in the same industry with the same clients and providing the same services — such as immersive experiences at Coachella, while Meta Platforms argues, per Bolognino, that it’s in a different industry — one is a “social technology” company and the other a “multi-sensory live experiences” company.
Bolognino heartily disputes that take. Meta Platforms has purchased a host of virtual reality startups (although the FTC tried to stop the years-long buying spree, in the case of one acquisition).
One of the most important concepts in evaluating trademark infringement, though, is the “likelihood for confusion,” per the USPTO. It comes down to whether or not the trademarks have a similar enough name and logo (and belong to a similar enough group of goods or services) that consumers might mix them up.
“You don’t mix up Dove chocolates and Dove soap,” said Shymane Robinson, principal attorney at Chicago-based True Lawyer. (Her company helps entrepreneurs with trademarks and is not involved in the case.)
After reviewing this case, Robinson told Entrepreneur it was a “classic” candidate for “reverse confusion,” which is when the alleged infringer, or later applicant for the trademark, is larger than the smaller company and can overwhelm the market and beat it out due to its lesser size. These cases often depend on how “strong” the mark is of the smaller company that had the trademark first.
You don’t mix up Dove chocolates and Dove soap.
A long list of litigation
Representatives for another company with “Meta” in its name, MetaCompany, a startup that has not yet released any products, told Entrepreneur in late September it had sent cease-and-desist letters to Meta Platforms but was still looking for legal representation to take the company to task for trademark infringement.
MetaCompany claims Meta Platforms had offered to settle but that the amounts were “miserly” and that it does not plan to sell, calling such offers both “paltry” and “blood money.”
Related: All You Need to Know About Using Trademarks for Your Business
Meta Platforms is also looking at a suit filed in early September from a company called Metacapital Management, an investment firm that claims it has been using its mark since 2001, obtained trademarks in 2002, and is asking for damages of $60 million. Metacapital did not respond to a request for comment.
Also reportedly planning on suing Meta, presumably for trademark infringement, is Meta PC, which builds ultra-powerful computer systems well-suited for gaming. The company reportedly said it wanted $20 million for the mark but declined to confirm to Insider. Entrepreneur was not able to find a publicly available concomitant lawsuit nor able to get in touch with the company for comment.
Still, it seems like Meta Platforms is interested in spending some money on some Meta trademark assets. In December 2021, the company bought the trademark assets of Meta Financial Group for a reported $60 million. In November and February Dfinity Foundation, a nonprofit focused on the blockchain, tried to sue Meta Platforms saying that their infinity logos were too similar. Meta won.
David Versus Goliath
Josh Gerben, a trademark attorney and founder and managing partner of Gerben Intellectual Property told Entrepreneur that Meta has been playing “three-dimensional chess” with its efforts to buy up trademarks assets, particularly ones with early filing dates.
Per a search in the U.S. Patent and Trademark Office’s Trademark Electronic Search System (TESS), Meta Platforms has filed hundreds of trademark applications for “Meta” and related marks.
One trademark registration that Meta Platforms acquired has a “first use” date of September 1996 for the name “METAVR.”
Entrepreneur reviewed approximately 120 TESS applications for “Meta” and Meta marks owned by Meta Platforms. We were also able to locate at least one transfer of 28 trademarks to Meta Platforms from another company.
“[Meta Platforms] went out and they acquired other trademarks that had priority dates in them, as far back as they could reach years before Facebook decided to change the name,” Gerben said.
Generally speaking, as far as trademark applications go, if you get there first, you’ll have “priority,” and people who come after you would be subject to your claims, Gerben said, but buying trademarks with earlier priority dates “is an extreme step.”
“This, to me, very clearly, was probably [a Meta Platforms] marketing decision, and legal is trying to build around it,” he added.
Meta Platforms also filed a trademark application for “Meta” on Oct. 28, 2021, the same day the company announced its global rebrand, giving them a trademark on the new Meta infinity logo and name in realms from computer software to crypto tokens.
The Chan Zuckerberg Initiative, a charitable organization established and owned by Facebook founder Mark Zuckerberg and his wife Priscilla Chan, also owned a “Meta” trademark (filed in 2015) for business administration and advertising. However, Meta Platforms has since purchased it, per a review of the trademark’s status on the TESS.
Bolognino’s company, MetaX, has a trademark application filing date of January 2016 with a “first use in commerce” date of May 2015 for “events using digital, virtual, and augmented reality.”
Still, in order for a trademark to stay valid, a company also has to prove that they’ve been using the mark continuously (or paused with an intent to resume) since the priority date or commerce date, whichever is earliest.
The attorney listed on many of Meta’s trademark applications that Entrepreneur reviewed was Anthony J. Malutta of Kilpatrick Townsend. He did not respond to our request for comment.
Does MetaX have a shot?
Tolek said it takes “sheer balls” to take on a company like Facebook and that normally, she wouldn’t have much hope for this type of case. But she points to the recent story of Happy Belly Bakes, a small company in India, which won a four-year trademark battle with Amazon to stop it from using the mark in India over “reverse confusion.”
“I think if a small company like that can do it, theoretically, MetaX can do it,” she said.
Tolek further agreed that the company’s trademark strategy has been unusual. There are applications for things like medical masks trademarked for Meta, which may just have been an attempt to “squat” on the Meta name, she posits.
Gerben said Bolognino may have a case, but trademark litigation is notoriously expensive.
To settle or not to settle
Despite the questions over priority dates and Bolognino’s zeal, Gerben posits that Meta Platforms actually losing to MetaX is “highly unlikely.”
If MetaX settled, it could look like licensing, a payout for MetaX, or even an agreement to coexist, Tolek said. But Bolognino indicated he doesn’t want to settle.
“What we really want more than anything else is for them to be held accountable,” Bolognino said. MetaX also does not want a licensing deal because “the damage is done,” he added.
When asked if a hypothetical billion dollars would make them reconsider and let Meta Platforms keep using the mark in virtual reality, MetaX’s attorney, Nicholas Saady, declined to answer.
“You know what’s cooler than a billion dollars, though?” Bolognino said. “Integrity.”
MetaX did not respond to several of Entrepreneur’s follow-up requests for comment.
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