Mymeta Software, Inc. v. Meta Platforms, Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER IS A P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

RSC

April 24, 2024

Opposition No. 91286055

MyMeta Software, Inc.

v.

Meta Platforms, Inc.

Before Zervas, Dunn, and Elgin,

Administrative Trademark Judges.

By the Board:

On December 7, 2023 the Board ordered the parties to file limited supplemental

briefing regarding the asserted corporate domestication of Opposer, and deferred

consideration of the pending motions to dismiss the original and amended notices of

opposition. Each party submitted its supplementation, and the matter is now ready

for decision.

A brief summary of the timeline leading to the filing of the original and amended

notices of opposition is as follows. MyMeta Software, Inc., a Delaware corporation,

(“MyMeta Software” or “Opposer”) filed an extension of time to oppose the subject

application electronically via the Board’s Electronic System for Trademark Trials and

Appeals (ESTTA). During the extended opposition period a notice of opposition was

filed, wherein the ESTTA cover sheet to the notice of opposition identified only

Opposition No. 91286055

MyMeta Software as the opposer, but the attached pleading identified only myMeta

Software SRL (“myMeta SRL”) as the opposer and owner of the pleaded application

for a composite mark which includes the literal element myMeta.1 Applicant filed a

motion to dismiss under Fed. R. Civ. P. 12(b)(1), for lack of subject-matter

jurisdiction, arguing myMeta SRL had not been granted the extension of time to

oppose. Opposer filed an amended notice of opposition that same day, in which the

opposer is identified as “MyMeta Software, Inc., a Delaware corporation … and [ ] the

corporate domestication of MyMeta Software, SRL”.2 Applicant filed a motion to

dismiss the amended notice of opposition as untimely and arguing that MyMeta

Software fails to sufficiently allege its entitlement to bring the statutory claim, which

resulted in the December 7, 2023 Board order requiring supplemental briefing on

corporate domestication.

I. Motion to Dismiss Amended Notice of Opposition Under Fed. R.

Civ. P. 12(b)(1)

Because this opposition was filed during an extended opposition period, the

opposition must be in the name of the entity to whom the extension was granted,

unless one of the exceptions of Trademark Rule 2.102(b) applies. 37 C.F.R. § 2.102(b);

see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)

1 1 TTABVUE. Record citations are to TTABVUE, the Board’s publicly available docket

system. See, e.g., New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *2 n.1 (TTAB

2020). The number preceding “TTABVUE” corresponds to the docket entry number; the

number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry,

if applicable.

2 7 TTABVUE 2. The certificate of service for Opposer’s amended pleading is at 8 TTABVUE.

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Opposition No. 91286055

§ 206.03 (2023).3 In its recent motion to dismiss this proceeding pursuant to Rule

12(b)(1), Applicant argues MyMeta Software’s amended pleading was filed outside of

the extended opposition period, the exceptions of Trademark Rule 2.102(b) are

inapplicable, and MyMeta Software cannot be “add[ed] … to myMeta SRL’s

previously [filed] opposition.”4 As we explain below, Applicant’s arguments are

premised on the incorrect assumption that myMeta SRL is considered to be the party

that filed the original notice of opposition.

The Board considers the ESTTA filing form and any attachments to comprise a

single document. PPG Indus., Inc. v. Guardian Indus. Corp., 73 USPQ2d 1926, 1928

(TTAB 2005). 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.” See id. at 1928 (in addition to identifying the filing party’s

name, the ESTTA filing form is also considered to include additional substantive

information such as the opposer’s entity type and address); see also PepsiCo, Inc. v.

Arriera Foods LLC, 2022 USPQ2d 856, at *1 (TTAB 2022) (despite the identification

of two parties in the attached pleading, only the party named on the ESTTA

coversheet to the pleading was charged the filing fee and found to be an opposer).

3 The exceptions in Rule 2.102((b) are “if the person in whose name the extension was

requested was misidentified through mistake or if the opposition is filed in the name of a

person in privity with the person who requested and was granted the extension of time.”

4 9 TTABVUE 4-5.

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Accordingly, the Board presumes the party named on the ESTTA filing form

accompanying the notice of opposition is the opposer, and an explanation will be

required if the filer seeks to identify a different opposer.5 If a filer completing the

ESTTA form alters the name of the party which received an extension to file an

opposition, ESTTA will prompt the filer to explain the difference in the names. See

TBMP §§ 303.05(b), 303.05(c). Because ESTTA does not examine an attached notice

of opposition, ESTTA will not prompt the filer to explain a difference in the name set

forth in the filing form and a name in the attached notice of opposition.

Here, MyMeta Software filed and received an extension of time to oppose and was

identified on the ESTTA form accompanying the notice of opposition. Therefore, the

Board instituted the proceeding with MyMeta Software as the opposer, even though

myMeta SRL was identified in the attached pleading.

Turning to the amended pleading filed on August 23, 2023, we note that it was

filed as a matter of course under Trademark Rule 2.107, 37 C.F.R. § 2.107, and Fed.

R. Civ. P. 15(a)(1)(B). See also TBMP §§ 315, 507.02. The pleading amends the

identity of the opposer to conform with the opposer previously identified on the

5 The Board may also, in appropriate circumstances, sua sponte address the identity of the

opposer. See UMG Recordings, Inc. v. O’Rourke, 92 USPQ2d 1042, 1043-44 (TTAB 2009). We

note the Board has long allowed amendments under Fed. R. Civ. P. 15(a) to correct the

misidentification of a plaintiff who misidentifies itself in an inter parties proceeding. See

Mason Eng’g & Design Corp. v. Mateson Chem. Corp., 225 USPQ 956, 957 n.3 (TTAB 1985)

(deeming pleadings amended to recite opposer’s correct name); Airbrook, Inc. v. La Critique

Belge, Naamloze Vennootschap, 184 USPQ 505, 505-06 (TTAB 1974) (amendment granted to

substitute sole user of mark when opposition mistakenly filed in name of original owner of

pleaded mark); Lone Star Mfg. Co. v. Bill Beasley, Inc., 176 USPQ 426, 426 n.1 (TTAB 1972)

(amendment granted to correct corporate title), rev’d on other grounds, 498 F.2d 906, 182

USPQ 368 (CCPA 1974); see also TBMP § 512.04 (and cases cited therein).

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Opposition No. 91286055

original ESTTA filing form. In other words, there is no determination by the Board

to accept an opposition filed in a name other than MyMeta Software. 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.

In view of the foregoing, the August 23, 2023 amended notice of opposition is

accepted as the operative pleading; Applicant’s September 6, 2023 motion to dismiss

pursuant to Fed. R. Civ. P. 12(b)(1) is denied; and Applicant’s August 23, 2023

motion, which was directed to the original notice of opposition, is moot and will

receive no further consideration.

II. Motion to Dismiss Amended Notice of Opposition Under Fed. R.

Civ. P. 12(b)(6)

We now turn to Applicant’s argument that the amended notice of opposition fails

to state a claim upon which relief can be granted. A motion to dismiss under Fed. R.

Civ. P. 12(b)(6) is a test solely of the sufficiency of a complaint. Adv. Cardiovascular

Sys. Inc. v. SciMed Life Sys. Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir.

1993); Ahal Al-Sara Grp. for Trading v. Am. Flash, Inc., 2023 USPQ2d 79, at *1

(TTAB 2023); NSM Res. Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1032 (TTAB

2014). For purposes of determining the motion, the complaint must be examined in

its entirety, construing the allegations therein liberally as required by Fed. R. Civ. P.

8(e), to determine whether it contains allegations which, if proved, would entitle the

plaintiff to the relief sought. Scotch Whisky Ass’n v. U.S. Distilled Prods. Co., 952

F.3d 1317, 1319, 21 USPQ2d 1145, 1147 (Fed. Cir 1991); Petróleos Mexicanos v.

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Opposition No. 91286055

Intermix S.A., 97 USPQ2d 1403, 1404-05 (TTAB 2010); IdeasOne, Inc. v. Nationwide

Better Health, Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Fair Indigo LLC v. Style

Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007).

A plaintiff need only allege sufficient factual content that, if proved, would allow

the Board to conclude, or draw a reasonable inference, that the plaintiff is entitled to

a statutory cause of action and a valid ground exists for opposing the registration.

Doyle v. Al Johnson’s Swedish Rest. & Butik, Inc., 101 USPQ2d 1780, 1782 (TTAB

2012) (citing Young v. AGB Corp., 152 F.2d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir.

1998)). The Board accepts as true all well-pleaded, material allegations of the

complaint, and construes the complaint in favor of the complaining party. See

Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021,

2023 (Fed. Cir 1987); Adv. Cardiovascular Sys. Inc., 26 USPQ2d at 1041.

To plead entitlement to a statutory cause of action under Section 13 of the

Trademark Act, a plaintiff must plead a real interest in the proceeding and a

reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,

LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa

Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir.

2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d

1713, 1727 (Fed. Cir. 2012). “Pleading facts, which if proved, would establish a

plaintiff’s entitlement to a statutory cause of action in a Board proceeding ‘is a low

threshold, intended only to ensure that the plaintiff has a real interest in the matter,

and is not a mere intermeddler.’” Ahal Al-Sara Grp. for Trading, 2023 USPQ2d 79,

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Opposition No. 91286055

at *2 (quoting Syngenta Crop. Protection v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 n.8

(TTAB 2009), and citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-

26 (Fed. Cir. 1999)).

To sufficiently plead a claim under Trademark Act § 2(d), a plaintiff must allege

proprietary rights that are prior to the defendant’s rights, and that the defendant’s

mark so resembles plaintiff’s mark as to be likely to cause confusion. 15 U.S.C.

§ 1052(d); Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025, 1030 (TTAB

2015). A plaintiff may plead likelihood of confusion hypothetically. See TBMP

§ 309.03(c)(2)(B) and cases cited therein.

Applicant argues that Opposer “does not and cannot allege sufficient facts to

assert it is entitled to a statutory cause of action because it solely relies on the

registration rights of a third-party, myMeta SRL.”6 In response, Opposer relies on its

argument that, as a corporate domestication, it is the same legal entity as myMeta

SRL.7

The amended pleading includes allegations regarding MyMeta Software’s prior

common law rights for the myMeta mark based on use in commerce.8 In view of these

allegations, we find that the amended pleading sufficiently pleads MyMeta Software’s

entitlement to a statutory cause of action. Double Coin Holdings Ltd. v. Tru Dev.,

2019 USPQ2d 377409, at *4 (TTAB 2019) (entitlement to bring and maintain

6 9 TTABVUE 9. To the extent Applicant also argues that MyMeta Software “fails to

establish” entitlement to a statutory cause of action, 15 TTABVUE 13, a motion to dismiss

“does not involve a determination of the merits of the case . . . . ” Libertyville Saddle Shop

Inc. v. E. Jeffries & Sons, Ltd., 22 USPQ2d 1594, 1597 (TTAB 1992).

7 10 TTABVUE 8-9.

8 Amended Notice of Opposition, ¶¶ 1, 2, 5, 6 (7 TTABVUE 2-3).

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Opposition No. 91286055

likelihood of confusion claim may be established based on prior common-law use of a

similar mark); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009)

(finding standing – now referred to as “entitlement” – based on common law use).

The amended pleading also includes allegations regarding an application owned

by myMeta SRL (and attached as Exhibit 5 thereto), for which the Office has cited

Applicant’s application as a potential bar to registration.9 We therefore address

MyMeta Software’s ability to rely on the pleaded application and hypothetical

likelihood of confusion based on a refusal of that application.

The dispute centers on the impact of myMeta SRL’s corporate domestication in

Delaware and whether the resulting entity, MyMeta Software, is or is not the same

legal entity as myMeta SRL. Opposer argues that, under Delaware’s applicable

statute, when a foreign corporation becomes domesticated “for all purposes of the

laws of the State of Delaware, the corporation shall be deemed to be the same

entity as the domesticating non-United States entity and the domestication shall

constitute a continuation of the existence of the domesticating non-United

States entity in the form of a corporation of this State.” Del. Code Ann. tit. 8, § 388(i)

(emphasis added). The statute further states:

When any domestication shall have become effective under this

section, for all purposes of the laws of the State of Delaware, all of

the rights, privileges and powers of the non-United States entity that

has been domesticated, and all property, real, personal and mixed,

and all debts due to such non-United States entity, … shall remain

9 Amended Notice of Opposition, ¶¶ 3, 7 (7 TTABVUE 3, 4). Exhibit 5 (7 TTABVUE 33, 34),

identifies myMeta SRL as the applicant of the pleaded application. See Caymus Vineyards v.

Caymus Med., Inc., 107 USPQ2d 1519, 1522 (TTAB 2013) (considering exhibits attached to

answer and counterclaim solely for purpose of ascertaining plausibility of allegations) (citing

Fed. R. Civ. P. 10(c)).

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vested in the corporation to which such non-United States entity has

been domesticated (and also in the non-United States entity, if and

for so long as the non-United States entity continues its existence in

the foreign jurisdiction in which it was existing immediately prior to

the domestication) and shall be the property of such corporation (and

also of the non-United States entity, if and for so long as the non-

United States entity continues its existence in the foreign

jurisdiction in which it was existing immediately prior to the

domestication), …. The rights, privileges, powers and interests in

property of the non-United States entity, … shall not be deemed, as

a consequence of the domestication, to have been transferred to the

corporation to which such non-United States entity has domesticated

for any purpose of the laws of the State of Delaware.

Id.

Applicant argues the Delaware statute appears to be self-contradictory in view of

the language concerning the vesting of rights and property in both the domesticated

corporation and the foreign entity, in contrast to the language at the end of the

provision that the foreign entity’s rights and interests in property shall not be deemed

transferred to the domesticated corporation as a consequence of the domestication.10

However, this argument fails to account for the very clear statement at the beginning

of the statute that the domesticated corporation shall be deemed to be the same as,

and a continuation of the existence of, the foreign entity.

Accordingly, 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.11 Cf. Skechers U.S.A.,

10 15 TTABVUE 10-11.

11 Applicant also argues that “[t]here is no basis for applying the [Delaware] statute in this

Board proceeding, particularly when doing so would be in contravention of established Board

rules.” (11 TTABVUE 5). We disagree. The determination of who may be party to Board

proceedings and who may claim the benefits of a pleaded application are matters properly

before the Board, and if state law must be addressed as part of the determination, we do so.

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Inc. v. Eliya, Inc., No. CV 16-02820, 2017 WL 3449595 (C.D. Cal. Feb. 3, 2017) (under

Virginia law, once “foreign corporation’s certificate of domestication becomes

effective, that corporation is deemed to be, inter alia, ‘the same corporation as the

corporation that existed under the laws of the jurisdiction or jurisdictions in which it

was originally incorporated or formerly domiciled’” and the change in state of

incorporation does not render it a new party for purposes of litigation) (quoting Va.

Code. Ann. § 13.1-722.6(A)(5)(b)); Perrigo Co. v. Merial Ltd., No. 8:14-CV-403, 2015

WL 1538088 (D. Neb. Apr. 7, 2015) (foreign entity and its Delaware domesticated

limited liability company “are the same entity”, citing Del. Code Ann. tit. 6, § 18-212).

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).12 Cf. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1035-36 (TTAB

2017) (mere licensee cannot rely on licensor’s use to prove priority); Chem. N. Y. Corp.

v. Conmar Form Sys., Inc., 1 USPQ2d 1139, 1142 (TTAB 1986) (since licensee is not

the owner of licensor’s registrations, licensee cannot rely on them for priority). In

See Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1323–25 (Fed. Cir. 1983)

(“Similarly in the present case, although other courts would be the proper tribunals in which

to litigate a cause of action for enforcement or breach of the contract here involved, that is

not sufficient reason for the [B]oard to decline to consider the agreement, its construction, or

its validity if necessary to decide the issues properly before it in this cancellation proceeding,

including the issue of estoppel.”); Old Swiss House, Inc. v. Anheuser-Busch, Inc., 569 F2d

1130, 196 USPQ 808 (CCPA 1978) (“It is proper, then, to look at the governing state law or

interpretation of the agreement [involving transfer of common law rights in the mark].”).

12 Because the pleaded application is based on Section 66(a) of the Trademark Act, any

assignment of the application must first be recorded at the International Bureau of the World

Intellectual Property Organization. 37 C.F.R. § 722; see also Trademark Manual of

Examining Procedure (“TMEP”) §§ 501.07, 1904.06 (Nov. 2023).

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other words, the rights of MyMeta SRL in the application are vested in MyMeta

Software, and MyMeta Software may rely on the refusal of that application as further

proof of its entitlement to bring the likelihood of confusion claim under Trademark

Act Section 2(d).

Although Applicant has not challenged the sufficiency of the claim, we further find

that Opposer has sufficiently pled a claim under Section 2(d) based on alleged prior

common law rights and hypothetical likelihood of confusion.13

Accordingly, Applicant’s motion to dismiss the amended notice of opposition for

failure to state a claim is denied.

III. Resumption of Proceedings

Proceedings are resumed on the following schedule.

Time to Answer 5/15/2024

Deadline for Discovery Conference 6/14/2024

Discovery Opens 6/14/2024

Initial Disclosures Due 7/14/2024

Expert Disclosures Due 11/11/2024

Discovery Closes 12/11/2024

Plaintiff’s Pretrial Disclosures Due 1/25/2025

Plaintiff’s 30-day Trial Period Ends 3/11/2025

Defendant’s Pretrial Disclosures Due 3/26/2025

Defendant’s 30-day Trial Period Ends 5/10/2025

Plaintiff’s Rebuttal Disclosures Due 5/25/2025

Plaintiff’s 15-day Rebuttal Period Ends 6/24/2025

Plaintiff’s Opening Brief Due 8/23/2025

13 Amended Notice of Opposition, ¶¶ 5-7, 9, 11, 12 (7 TTABVUE 4). Because Opposer pleads

the USPTO’s refusal of the pleaded application on the basis of likelihood of confusion rather

than directly pleading its own belief in a likelihood of confusion, we do not construe the

amended pleading as asserting a claim of likelihood of confusion directly. If Opposer intended

to assert such a claim, it should promptly file a motion to amend its pleading. Fed. R. Civ. P.

15(a)(2); see also TBMP § 507.

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Opposition No. 91286055

Defendant’s Brief Due 9/22/2025

Plaintiff’s Reply Brief Due 10/7/2025

Request for Oral Hearing (optional) Due 10/17/2025

Important Trial and Briefing Instructions

Generally, the Federal Rules of Evidence generally apply to Board trials. Trial

testimony is taken and introduced out of the presence of the Board during the

assigned testimony periods. The parties may stipulate to a wide variety of matters,

and many requirements relevant to the trial phase of Board proceedings are set forth

in Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the

manner and timing of taking testimony, matters in evidence, and the procedures for

submitting and serving testimony and other evidence, including affidavits,

declarations, deposition transcripts and stipulated evidence. Trial briefs shall be

submitted in accordance with Trademark Rules 2.128(a) and (b). Such briefs should

utilize citations to the TTABVUE record created during trial, to facilitate the Board’s

review of the evidence at final hearing. See TBMP § 801.03. Oral argument at final

hearing will be scheduled only upon the timely submission of a separate notice as

allowed by Trademark Rule 2.129(a).

TIPS FOR FILING EVIDENCE, TESTIMONY, OR LARGE DOCUMENTS

The Board requires each submission to meet the following criteria before it will be

considered: 1) pages must be legible and easily read on a computer screen; 2) page

orientation should be determined by its ease of viewing relevant text or evidence, for

example, there should be no sideways or upside-down pages; 3) pages must appear in

their proper order; 4) depositions and exhibits must be clearly labeled and numbered

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Opposition No. 91286055

– use separator pages between exhibits and clearly label each exhibit using sequential

letters or numbers; and 5) the entire submission should be text-searchable.

Additionally, submissions must be compliant with Trademark Rules 2.119 and 2.126.

Submissions failing to meet all of the criteria above may require re-filing. Note:

Parties are strongly encouraged to check the entire document before filing.14 The

Board will not extend or reset proceeding schedule dates or other deadlines to allow

time to re-file documents. For more tips and helpful filing information, please visit

the ESTTA help webpage.

14 To facilitate accuracy, ESTTA provides thumbnails to view each page before submitting.

13