Kirton McConkie Attorney Defends Italian Client’s Trademark Against Meta
Brian Tucker, an attorney in Kirton McConkie’s IP section, successfully defended the firm’s Italian client, MyMeta Software Inc., against Meta Platforms Inc., formerly known as Facebook. On April 25, 2024, the United States Patent and Trademark Office’s Trademark Trial Appeal Board (TTAB) issued a "precedential decision" in favor of MyMeta Software Inc., marking a significant milestone in trademark protection.
MyMeta Software Inc., a Delaware-based entity derived from the Italian company MyMeta Software SRL, secured a European registration for the MyMeta mark in 2020. Leveraging this European registration, the company initiated a U.S. application for the same mark. This strategic move was pivotal as MyMeta had established usage of the mark in the U.S. before Facebook's rebranding to Meta in 2021.
The legal battle unfolded as the firm filed an opposition against one of Meta's trademark applications, aiming to reach a mutual agreement, which would allow both parties to use their respective marks. However, Meta contended that they never engage in co-existence agreements and challenged MyMeta's position by asserting that the Delaware domestication of the Italian company constituted a third party with limited rights.
Tucker, representing MyMeta Software Inc., countered Meta's arguments by citing Delaware's domestication statute, which deems the domesticated entity synonymous with the foreign entity. The TTAB agreed, affirming MyMeta Software Inc.'s entitlement to challenge Meta's trademark applications.
Moving forward, the focus shifts to establishing MyMeta's priority of rights to the MyMeta mark and pursuing a legitimate claim for trademark infringement against Meta. The TTAB's acknowledgment of MyMeta Software Inc.'s standing in this legal realm adds an extra layer of triumph to their recent victory.
