Precedential No. 6: TTAB Denies Meta Platforms' Motion to Dismiss META Opposition on Timing and Standing Grounds

The Board denied Applicant Meta Platform, Inc.'s motion to dismiss this Section 2(d) opposition, rejecting its claims that the Board lacked subject matter jurisdiction (FRCP 12(b)(1)) and that Opposer MyMeta Software, Inc. failed to state a claim upon which relief can be granted (FRCP 12(b)(6). The first ground concerned the alleged untimeliness of opposer's amended notice of opposition, while the second denial hinged on the relationship of MyMeta Software, Inc., a Delaware corporation, and MyMeta Software SRL, its Italian counterpart. MyMeta Software, Inc. v. Meta Platforms, Inc., 2024 USPQ2d 780 (TTAB 2024) [precedential].

FRCP 12(b)(1) Motion: MyMeta Software, Inc. obtained an extension of time to oppose Meta Platforms' application to register the mark META for a host of computer-related services in Class 42. When the notice of opposition was filed, the ESTTA cover sheet named MyMeta Software, Inc. as the opposer, but the notice of opposition itself named myMeta SRL as the opposer. Based on the cover sheet, however, the Board considered MyMeta Software, Inc. as the opposer

The Board uses the information provided on an ESTTA filing form accompanying a pleading when instituting the proceeding. This includes the name of the opposer, which is identified on the ESTTA filing form directly following the statement: “Notice is hereby given that the following party opposes registration of the indicated application.”

An amended notice of opposition was filed by MyMeta Software, Inc., as a matter of course under Rule 2.107 and FRCP 15(a)(1)(B), naming MyMeta Software, Inc. as the opposer. Applicant Meta Platforms argued that because the amended notice naming a different opposer was filed outside the extended opposition period, the amendment was untimely and the Board therefore lacked jurisdiction. The Board disagreed. "Because the Board already considered MyMeta Software as the opposer in the timely filed July 14, 2023, notice of opposition, MyMeta Software’s amended pleading is not an untimely effort to bring an opposition."

And so, The Board dismissed the FRCP 12(b)(1) motion.

FRCP 12(b)(6) motion: Meta Platforms argued that MyMeta Software "does not and cannot allege sufficient facts to assert it is entited to a statutory cause of action because it solely relies on the registration rights of a third-party, myMeta SRL." MyMeta Software responded that it is a "corporate domestication" of the Italian company and is therefore the same legal entity myMeta SRL.

The Board first observed that MyMeta Software pleaded ownership of prior common law rights in the mark myMeta, and therefore sufficiently pleaded entitlement to a statutory cause of action. Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *4 (TTAB 2019).

The amended notice of opposition also included allegations regarding an application owned by myMeta SRL, as to which the USPTO had cited Meta Platforms' application as a potential bar to registration. The question, then was "the impact of myMeta's corporate domestication in Delaware and whether the resulting entity, MyMeta Software, is or is not the same legal entity as my Meta SRL."

The Board looked to Delarawe's appliable law, concluding that "under the plain language of the statute, myMeta SRL (the non-United States entity) and MyMeta Software (the domesticated corporation) are deemed to be the same continuing entity under Delaware law." Del. Code. Ann. tit. 8 Section 388(i).

Under the Delaware statute, myMeta SRL is not a third party but rather the foreign corporation whose domestication resulted in MyMeta Software and the rights and property of myMeta SRL are vested in MyMeta Software. Del. Code Ann. tit. 8, § 388(i).

The Board concluded that MyMeta Software Inc. may rely on the refusal of the application owned by myMETA SRL "as further proof of its entitlement to bring the likelihood of confusion claim under Section 2(d)."

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TTABlogger comment: The myMeta SRL application (filed under Section 66(a)) has an earlier constructive use date than the META application because it claims priority to an earlier Jamaican application. Therefore, it is available as a ground for opposition, but judgment is contingent on issuance of a registration on that U.S. application. See Section 7(c) of the Trademark Act and Trademark Rule 2.129(d).

Text Copyright John L. Welch 2024.