The rebranding of the former Facebook Inc. to Meta Platforms was not without controversy when it was announced in late 2021. Several trade mark owners at the time raised objections to Meta’s use of the name, believing that there was a significant risk that it would infringe on their intellectual property (IP).

Companies like Meta Company, MetaX LLC, META (Meta.is) and others spoke out against Meta Platforms, and in some cases warned of legal action at the time of the announcement. However, this is often to be expected, especially when a business uses a relatively common word as part of its new name or identity. Organisations should always access searching and clearing services from an IP solicitor when rebranding, as this can identify existing registrations and help you to secure and protect new brand assets.

Meta Platforms has the resources it needs to secure and defend its intellectual property, even if several existing companies have already used the name. Beyond that, there are lessons other businesses can take from Meta’s intellectual property strategy - so, if your company is considering a rebrand, there is no better example to follow.

Here, the intellectual property experts at JMW Solicitors break down the steps Meta Platforms took to protect its IP, the lessons that other businesses can take from this strategy, and the legal services that organisations need when rebranding in order to secure their intangible assets.

Step one: Searching and clearing

Searching and clearing services are essential for any business, whether you are launching a new product, rebranding, or developing any other types of intellectual property. When you instruct a solicitor, they will monitor any existing trade mark registrations and advise you as to whether or not you will be able to secure the necessary protections for your assets.

The other factor that applies to this is trade mark categories, which is also the reason that several companies can own ‘Meta’-related trade marks at the same time. All trade marks must be registered in relation to specific categories, based on the industry or sector in which a business wants to trade, or the products or services it wants to provide. These categories are designed to limit the scope of the protections that businesses can provide and enable organisations to use similar names, provided this does not prevent competition or mislead customers.

Each of the companies that raised concerns about Meta Platforms’ rebrand owned a trade mark in a different category. Naturally, this can create significant legal complications and is just one reason that it is vital to engage searching and clearing services during the rebranding process.

In Meta Platforms’ case, this process will have identified the existing trade marks. From that point, there were several ways that the company’s management could respond. If they were certain that the existing trade marks did not overlap with categories in which the former Facebook Inc. intended to trade, Meta’s executives could have registered in the relevant categories and moved ahead with the rebrand. Alternatively, they could have tried to purchase the existing marks. In reality, they took a combined approach in order to best secure their brand assets.

Step two: Register assets as trade marks

If you are able to confirm that you can register your assets in the required categories, the next step is to file these registrations.

Typically, a business only needs to register in a few categories at most - these are determined by the industries it works in and the products it wants to sell. For an organisation as large as Meta Platforms, securing the maximum possible protection might be desirable, to cover any potential future expansions of the company’s activities and quell the actions of bad faith actors. Other than the financial expense, there is no restriction on how many trade marks you can own, or in how many categories, although it is usually only worthwhile to register in categories in which you intend to trade. 

The other outcome may be that the trade marks you wish to register are unavailable. For example, Meta Platforms was unable to register ‘Meta’ as a trade mark in category 09 (which applies to technical apparatus and instruments) because this trade mark already existed and was owned by Meta Company. For businesses that are undergoing a rebrand, it is important to note that this is far less likely for organisations that choose a more obscure name - an invented or little-used word, for example.

If the assets you wish to register already exist, this does not only mean that you will be able to secure them. It also means that, by using your assets and trading in these categories, you may be infringing on someone else’s intellectual property rights. There are several approaches you can take - in Meta’s case, the company worked to purchase these rights and avoid the risk of infringement.

Step three: Purchase existing trade marks

Since Meta Platforms could not register its ownership of the name ‘Meta’ in all the categories it wanted, the company attempted to purchase the existing trade marks. According to Meta Company (one of the existing trade mark owners), Meta Platforms made an offer to purchase its trade mark in 2021. Meta Company initially turned down this offer, but Meta Platforms is now listed as the trade mark owner, meaning that the effort to purchase the asset was eventually successful.

While a business would usually only need to register in a few categories, the size of Meta Platforms means that there may be a risk of competitors purchasing ‘Meta’-related trade marks in other categories - this could restrict the business’ future activities, or potentially enable competitors to use the ‘Meta’ name in a way that implies a connection to the Facebook owner. While it would be illegal to intentionally misrepresent a product as having an association with Meta Platforms, the use of the trade mark could create confusion among consumers.

As a result, the company has purchased the intellectual property rights to use its name in many trade mark categories, including categories in which it does not currently trade - for example, category 036, which relates to financial and banking services, including online banking.

In some cases, this might indicate that a business plans to expand into a new industry, but in Meta’s case, it is more likely that the company is simply being as comprehensive as possible in securing its intellectual property rights. It is unclear whether Meta Platforms intends to move into online banking, but the fact that this trade mark was already in existence and registered by a different company may have encouraged Meta to purchase it, simply to avoid any potential infringement. It is unclear whether or not the company has plans to trade or develop products in these categories, but it can now be certain that there is no risk of competitors doing so.

Step four: Protect assets

We have yet to see Meta Platforms take this step in any significant way, but it is important that all businesses with registered trade marks (or other intellectual property assets) monitor for infringement and proactively protect its assets. Certainly, it is very likely that if there was any attempt to infringe on Meta’s trade marks, the company would be quick to respond.

JMW offers a service called JMWatch, which takes care of this type of monitoring on a business’ behalf. This allows us to quickly identify any new trade mark registrations that could potentially infringe on your intellectual property, and advise you of the best ways to respond. In this way, you can ensure that you enjoy the maximum value that your intellectual property assets can provide, without the risk of competitors trying to confuse your customers or damage your reputation.

If you need support with any intellectual property matter, contact the team at JMW Solicitors today. Our intellectual property services are highly sought after throughout the UK, and our experience means that we are ideally suited to help businesses like yours. Call us on 0345 872 6666, or fill in our online enquiry form to request a call back at your convenience.