Suppose you wake up one day to discover that the name of the company you founded more than a decade ago has been snatched up by one of the most powerful companies on earth.
Apparently, Justin Bolognino was in the same situation when last year Facebook rebranded as Meta. META – the full name is METAx LLC – is Justin Bolognino’s small business.
“It was surreal. It was like watching a movie,” Bolognino said in a CNBC exclusive interview, when asked when he first heard the news about Facebook changing its name.
“This is not a scenario I ever wanted to have. This is not a scenario I would wish on my worst enemy,” bolognino said. Facebook is being sued for trademark infringement and unfair competition. “When Facebook stole the Meta brand from us, it just completely decimated our business.”
Bocolino says he started his company to create live experience for events like Coachella using virtual and augmented reality 12 years ago. As a result of Facebook’s announcement last year, business came to a screeching halt, Bolognino said.
″[The services we offer] are drastically identical… we have the same goal which is social immersion in virtual spaces,” he said.
Bolognino’s lawyer, Dyan Finguerra-DuCharme, who is also a partner at Pryor Cashman LLP, claims she contacted Meta Platforms right away to inform the firm that it was infringing on her client’s intellectual property rights.
“This issue of what’s called reverse confusion, when you’ve got a small player who’s been doing their business for a period of time, and then you get a giant corporate behemoth with sheer arrogance says ‘I’m going to own this mark now and I’m going to do business with this regardless of the fact that you were here before me,’” she told CNBC.
Bolognino’s lawyer said the two companies had been in negotiations for eight months. She added that after providing thousands of pages of information in an effort to remedy the problem, Meta Platforms refused to participate.
“Now my client goes out to try to market and promote its services, consumers now falsely and mistakenly believe that its services are coming from Facebook,” she said.
According to Finguerra-DuCharme, her client is left with no choice but to file a lawsuit. This has caused META’s business to be “irreparably and irrevocably harmed.”
Meta Platforms was contacted by CNBC for comment, but no response was received right away.
Bolognino says he will keep fighting until the fight is won.
“We would like to be compensated for our 12 years worth of building a brand so cool and so valuable that one of the biggest companies on Earth and Facebook wanted to steal it from us,” he said.
The amount of monetary damages is not stated in the case.
Professor of law Jessica Litman from the University of Michigan and co-author of the casebook “Trademarks and Unfair Competition Law: Cases and Materials,” says META has a “completely plausible claim [against Meta Platforms] and could well prevail.”
“The corporate name is METAx LLC, but the company registered META as a service mark in 2017, and the complaint alleges that they have used META as a service mark for its business,” she said. “It doesn’t matter for trademark infringement purposes what a party’s corporate name is; it matters what trademark or service mark it uses in its business.”
There are several companies out there that are also using “Meta” as part of their mark, and they may be persuaded to follow suit, according to Litman, thus Meta Platforms probably wants to be cautious before deciding on META.
“On the other hand, it will almost certainly be cheaper to pay META enough money to cause it to change its name than to litigate the suit to its conclusion,” Litman said.
