U.S. immersive virtual reality experience company METAx LLC has sued Facebook parent company Meta Platforms (META.US) for trademark infringement. And in a recent interview, METAx founder Justin Bolognino once again touched on the incident and the impact it has had on his company. In the interview, when asked about the first time he heard the news that Facebook was changing its name, Bolognino said, “It’s so bizarre, it’s like watching a movie.”
Bolognino said he started his small business 12 years ago and uses virtual and augmented reality technology to create multi-sensory live experiences for events as diverse as the Coachella music festival. However, his company’s business hit a sharp brake after Facebook announced the news last year.
In response, Bolognino’s attorney, Dyan Finguerra-DuCharme, a partner at Pryor Cashman LLP, said that she contacted Meta Platforms immediately after the incident and informed the company that it violated her client’s intellectual property rights.
In the interview, Finguerra-DuCharme said, “The problem is called reverse confusion, where there is a small player in the market that has been doing business for a while, but then suddenly a huge corporate giant comes along and very arrogantly says, ‘I’m going to own this trademark now, regardless of first come first served. I’m going to use this trademark for business.'”
Finguerra-DuCharme said the two companies had been in negotiations for eight months, but she noted that Meta Platforms was not willing to negotiate, despite the thousands of pages of information they submitted to resolve the issue.
“Now when my clients go out and try to market and promote their services, consumers are misidentifying their services as coming from Facebook,” she said.
As a result, FinguerraDucharme said, her client had no choice but to sue. According to the complaint, METAx’s business has suffered “irreparable and irreparable harm,” but the lawsuit does not specify the amount of monetary damages.
Finally, Bolognino also said he would fight to the end, no matter how long it took. He noted, “We want to be compensated because we spent 12 years building a brand that is so cool and so valuable that one of the biggest companies in the world and Facebook wants to steal that brand from us.”
In response, University of Michigan law professor Jessica Litman commented that METAx “has a perfectly reasonable claim against Meta Platforms and will likely prevail in this lawsuit.”
Litman said, “The company’s name is METAx LLC, but the company already registered META as a service mark in 2017, and the lawsuit claims they are using META as a service mark for their business. For purposes of trademark infringement, it doesn’t matter what a party’s company name is, what matters is what trademark or service mark that company uses in its business.”
Litman also said Meta Platforms may be wary of settling with METAx because there are many other businesses that use “Meta” as part of their service marks, which could push them to follow suit.
“In addition, it would almost certainly be much cheaper to pay METAX sufficient compensation and change its name than to go through the process from filing a lawsuit to the outcome,” Litman said.
