What’s In A Name? Maybe A Trademark Infringement.

Oops.

This October, Mark Zuckerberg announced to great fanfare that social-media behemoth Facebook would be changing its name to Meta. As in, the metaverse—the disembodied, digital place where we’ll all soon work, play, shop, and socialize. The no-holds-barred launch was dazzling to behold.

Then came the wrinkle: as it turned out, the name Meta was already spoken for. Meta PC, a Scottsdale, AZ, purveyor of gaming computers and software, had filed the paperwork to trademark its name back in August. Meta, Mr. Zuckerberg learned, was not available.

What’s a would-be master of the metaverse to do? It appears young Meta PC (the company was founded in 2020 and has only 25 employees) has agreed to sell Mr. Zuckerberg the name for a cool $20 million—but not before suggesting in a hilarious tweet that it might turn around and change its name to Facebook.

Trademarks: It Pays to Do Your Research

$20 million might not be a lot of money for a founder worth an estimated $124 billion, but for mere mortals with businesses on thinner margins, any kind of settlement can be prohibitive—especially if it comes on top of the money already spent on signs, logo design, and promotional materials.

Business owners working on branding their new venture should take the time to understand trademarks and investigate potential names to make sure they’re not already in use. Moving fast and breaking things does sound fun, but also tends to involve having to pay for them later.

How Do Trademark Protections Work?

Trademarks designate intellectual property, including names, logos, slogans, and even colors (think Target’s signature red or UPS’ brown). If a business uses the name, logo, slogan, or color scheme of another business offering a similar product or service without permission, it is violating its trademark—a serious offense since the similar branding can confuse customers and impact revenue.

While names and other branding expressions can be trademarked at the state, federal, or international level, U.S. law also extends trademark protections to branding that has not been officially trademarked. In these cases, determining factors tend to be industry and geographic area.

For example, if you decide to name your new business Acme Tires, the Acme Car Wash on the other side of town over may be able to sue you for trademark infringement—whether the car wash has registered its name or not—on the grounds that having two car-related businesses in the same area with nearly identical names could confuse customers and result in a loss of business for the original Acme.

On the other hand, Acme Accounting Services down the road from Acme Tires might be annoyed at your choice but would be unlikely to have grounds for legal action since no reasonable person would mistake a tire store for a CPA firm.

Avoiding Trademark Infringement

Trademark infringement can result in substantial fines on top of all the money already invested in branding materials, and being forced to give up your name can damage your new but growing enterprise. If you’re a Zuckerberg, you might be able to buy your way out of the problem by acquiring the name. If you’re not, do your homework before printing up those mailers.

To start:

• Google, of course. Search for businesses in your geographic area with the same or similar name or logo, and a similar product. If you get hits, find another name.
• Check with the U.S. Patent and Trademark Office. This agency can tell you if the name and logo have been registered with the federal government. Likewise, check with the office of your Secretary of State to see if they’re registered there.
• Contact an experienced patent and trademark attorney. An attorney can help search for existing trademark-protected names and logos, whether these are registered or not, and can advise you on the gray areas.
• Document your findings. If your right to the name is disputed, your records will help to show you did your due diligence and proceeded with your company’s branding in good faith. This record can also be useful in the event someone infringes on your name or logo.

Don’t make a Meta mistake! For help avoiding trademark infringements, call attorney Carrie Ward at 856-354-7700.