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`No. ______________
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`COMPLAINT
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`) ) ) ) ) ) )
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`Anthony J. Dreyer
`David M. Lamb
`Michael C. Salik
`SKADDEN, ARPS, SLATE,
` MEAGHER & FLOM LLP
`One Manhattan West
`New York, New York 10001
`Tel.: (212) 735-3000
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`Attorneys for Plaintiff
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`METACAPITAL MANAGEMENT, L.P.,
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`Plaintiff,
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`v.
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`META PLATFORMS, INC.,
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`Defendant.
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`METACAPITAL MANAGEMENT, L.P.’S COMPLAINT
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`Plaintiff Metacapital Management, L.P. (“Metacapital”) by its attorneys, for its
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`Complaint against Defendant Meta Platforms, Inc., f/k/a Facebook, Inc. (“Defendant” or
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`“Facebook”), upon personal knowledge as to its own acts and conduct and on information and
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`belief as to all other matters, states and alleges as follows:
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`INTRODUCTION
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`1.
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`This is an action alleging trademark infringement in violation of Sections
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`32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a), unfair competition in violation of
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`Section 43 of the Lanham Act, 15 U.S.C. § 1125(a), common law trademark infringement, and
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`false advertising in violation of N.Y. Gen. Bus. Law § 350.
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 2 of 21
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`2.
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`This action concerns Facebook’s blatant and willful disregard of
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`Metacapital’s longstanding trademark rights. Since 2001, Metacapital has provided industry-
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`leading financial management and advisory services, particularly in the mortgage and structured
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`credit markets, under its METACAPITAL trademark (the “METACAPITAL Mark”).
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`3.
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`Over the past 20 years, Metacapital has earned a well-deserved reputation
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`for its outstanding service and has been recognized in various rankings of the nation’s top funds,
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`including by Bloomberg, Barron’s, and BarclayHedge, and has received numerous Absolute
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`Return Awards.
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`4.
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`Moreover, since its inception, Metacapital has routinely used the
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`shorthand “Meta” to refer to itself (the “META Mark”), and consumers have come to associate
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`Metacapital and its services with the META Mark (the METACAPITAL Mark and the META
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`Mark are collectively referred to herein as the “Marks”).
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`5.
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`As a consequence of its continuous, extensive, and well-publicized use of
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`the Marks, particularly within the financial services industry, and the substantial goodwill that
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`Metacapital has built as a result of its outstanding service, Metacapital has acquired strong
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`trademark rights in the Marks.
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`6.
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`On October 28, 2021, Facebook announced that it was changing its name
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`from Facebook, Inc.—which it had used for over 17 years—to “Meta.” Facebook had been
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`hyping this name change for several days leading up to the announcement, and the change was
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`announced in connection with Facebook’s much-anticipated annual conference, Facebook
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`Connect 2021. Accordingly, the announcement was highly publicized and purposefully designed
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`to garner maximum attention from the press and the public.
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`2
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 3 of 21
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`7.
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`Although Facebook has been largely known as a social media platform for
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`the majority of its existence, in the past several years it has become increasingly clear that
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`Facebook plans to expand its reaches into several other sectors, including the financial services
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`sector.
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`8.
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`For example, as early as 2019, Facebook was publicly promoting new
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`initiatives that had the explicit goal of enabling universal access to all types of financial services,
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`including with Facebook’s founder and CEO, Mark Zuckerberg, providing testimony to
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`Congress on Facebook’s plans for expansion into the financial services sector.
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`9.
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`Additionally, in 2020, Facebook created a new unit devoted to financial
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`services—Facebook Financial. Over the course of the past two years, this unit has increased in
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`importance for Facebook, and changed from Facebook Financial to Novi to, most recently, Meta
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`Financial Technologies.
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`10.
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`Indeed, as a sign of the importance Facebook places on its financial
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`services business (and the value it places on using the “Meta” name in association with financial
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`services) in December 2021 Facebook publicly confirmed that it paid $60 million to purportedly
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`acquire the trademark rights of a regional bank named Meta Financial Group—rights junior to
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`those of Metacaptial.
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`11.
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`Facebook’s use of the “Meta” mark in connection with financial
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`services—and clear plans to continue and expand such use in connection with these and similar
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`services—is likely to cause significant harm to Metacapital’s business.
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`12.
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`Facebook, however, appears wholly unconcerned about how its actions
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`might impact Metacapital, believing instead that it is entitled to introduce its “Meta” mark into
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`any sector it chooses with impunity. Given that Facebook was aware of Meta Financial Group
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`3
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 4 of 21
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`and its purported rights (which post-date Metacapital’s priority by at least two years), it is not
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`credible that Facebook was also not aware of Metacapital.
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`13.
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`Nonetheless, Facebook brazenly moved forward with its rebranding of its
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`financial services unit with the “Meta” name, regardless of Metacapital’s superior rights.
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`14. Moreover, although Metacapital informed Facebook in May of this year
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`that Facebook’s actions were likely to cause confusion with Metacapital’s business, Facebook
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`drug its feet and refused to make any meaningful efforts to avoid such confusion.
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`15.
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`In short, Facebook has shown a blatant disregard for Metacapital’s rights,
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`and its actions have already begun to deteriorate the goodwill that Metacapital has built in the
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`Marks for over two decades. If Facebook’s infringing activities are not enjoined, such actions
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`will continue to cause significant confusion among consumers and irreparable harm to
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`Metacapital.
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`16.
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`Additionally, given Facebook’s looming, near ubiquitous presence across
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`various industries and sectors, including in the field of financial services, consumers are likely to
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`believe, incorrectly, that Metacapital is associated with Facebook for the rest of Metacapital’s
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`corporate existence, or else is attempting to trade off of and infringe on Facebook’s purported
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`rights, causing further substantial harm to Metacapital.
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`PARTIES
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`17.
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`Plaintiff Metacapital is an entity organized under the laws of Delaware,
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`maintaining its principal place of business at 152 W. 57th St., 8th Floor, New York, NY 10019.
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`18.
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`Defendant Facebook is a Delaware Corporation, maintaining its principal
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`place of business at 1601 Willow Road, Menlo Park, CA 94025.
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`4
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 5 of 21
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`JURISDICTION AND VENUE
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`19.
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`This Court has subject matter jurisdiction over the Lanham Act claims
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`asserted herein pursuant to 28 U.S.C. §§ 1331 and 1338(a). This Court has subject matter
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`jurisdiction over the related state law claims raised in this action pursuant to 28 U.S.C. §§
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`1338(b) and 1367.
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`20.
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`This Court has personal jurisdiction over Facebook because Facebook has
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`transacted a substantial amount of business in this District, Facebook maintains a systematic
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`presence in this District, and Facebook is registered to do business in the State of New York.
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`21.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)(2), as a
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`substantial part of the events giving rise to the claims asserted herein occurred in this District,
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`and 28 U.S.C. § 1391(d).
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`Metacapital’s Background
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`STATEMENT OF FACTS
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`22. Metacapital was founded in 2001, and over the past two decades has
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`established itself as an industry-leading investment advisory firm specializing in the mortgage
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`and structured credit markets, including fixed income relative value trading, structured credit,
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`directional rates trading, equities trading, and, most recently, carbon-related trading.
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`23. Metacapital offers various services to its clients including investment
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`management services, investment advisory services, asset management services, and investment
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`strategy services.
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`24.
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`In addition, over the past two years Metacapital has been working to
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`expand its service offerings to include exchange-traded funds, or ETFs.
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`5
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 6 of 21
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`25.
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`As a result of its outstanding performance, Metacapital has been
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`repeatedly recognized in various rankings of the nation’s top funds, including by Bloomberg
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`Markets, Barron’s, and BarclayHedge, and has received numerous Absolute Return Awards.
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`26. Metacapital’s clients include or have included both individuals as well as
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`major financial institutions such as CitiBank, Barclays, J.P. Morgan, Morgan Stanley, Wells
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`Fargo, Bank of America, Goldman Sachs, Credit Suisse, and others. Metacapital also works
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`with various large global pension funds, family offices, insurance companies, and hedge funds.
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`27.
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`Over the last ten years, the value of investments managed by Metacapital
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`has averaged over $6 billion annually.
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`28. Metacapital has also received substantial unsolicited media attention, and
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`has been featured on CNBC, Bloomberg TV, and Albourne TV. In addition, Metacapital
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`representatives have spoken at numerous industry conferences and panels, including those
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`organized by SALT, Bloomberg, and ALTSV.
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`The METACAPITAL Mark and the META Mark
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`29.
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`Since its founding in 2001, Metacapital has continuously used the
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`METACAPITAL Mark in connection with its financial services business.
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`30.
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`In February 2002, Metacapital applied for and obtained U.S. Trademark
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`Registration No. 2,720,780 covering the mark METACAPTIAL MANAGEMENT for financial
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`services, namely, investment advisory services, investment management services and asset
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`management services (the “Metacapital Management Registration”). A copy of the Metacapital
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`Management Registration is attached hereto as Exhibit A.
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`31. Metacapital subsequently applied for and obtained U.S. Trademark
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`Registrations covering the marks METACAPITAL (U.S. Trademark Registration No. 4,338,215;
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`the “Metacapital Registration”) and M METACAPITAL (U.S. Trademark Registration No.
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`6
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 7 of 21
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`4,338,621; the “M Metacapital Registration,” and together with the Metacapital Management
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`Registration and the Metacapital Registration, the “Registrations”), both for financial services,
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`namely, investment advisory services, investment management services and asset management
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`services. A copy of the Metacapital Registration is attached hereto as Exhibit B and a copy of
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`the M Metacapital Registration is attached hereto as Exhibit C.
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`32.
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`The Registrations are based on a first use in commerce date of November,
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`2001, and all of the Registrations are incontestable.
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`33.
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`In addition, since its inception, Metacapital has routinely used the
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`shorthand “Meta” to refer to itself, and Metacapital’s clients and potential clients have adopted
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`this shorthand as well.
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`34. Metacapital’s use of the META Mark is arbitrary in connection with its
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`financial services offerings.
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`35. Metacapital has spent tens of millions of dollars in advertising, marketing,
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`and promoting its services offered under the Marks, including through its website
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`(metacapital.com), at trade conferences and panels, and in industry publications.
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`36.
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`The Marks have been consistently displayed to Metacapital’s consumers
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`since at least as early as 2001, both digitally and in the real world—including in marketing and
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`pitch materials, social and mainstream media, and the internet-at-large.
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`37.
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`Throughout its history, Metacapital has transacted at least $2 trillion in
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`business under the Marks.
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`38.
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`As a result of the above extensive, continuous, and well-publicized uses,
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`the Marks have come to be associated with Metacapital in the minds of consumers, and
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`7
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 8 of 21
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`Metacapital has acquired strong trademark rights in the Marks. In addition, Metacapital has
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`acquired secondary meaning in the META Mark.
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`Defendant’s Adoption of the Infringing Mark
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`39.
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`On October 28, 2021—nearly twenty years after Metacapital first started
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`using the Marks—Facebook announced that it was changing its corporate name from Facebook,
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`Inc. to Meta Platforms, Inc., and that it was rebranding itself as simply “Meta.”
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`40.
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`In the days and weeks leading up to this announcement, Facebook had
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`been teasing this rebranding in an effort to create buzz around its new name and image.
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`41.
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`Facebook made the announcement in connection with its Facebook
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`Connect annual conference, thereby ensuring that it would receive as much media and consumer
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`attention as possible.
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`42.
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`Along with adopting the brand name “Meta,” Facebook has begun to use
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`the word “meta” as a prefix for certain branded experiences and services it plans to introduce in
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`the future. Facebook now uses the “Meta” name as an umbrella corporate trade name covering
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`all of its goods and services, including in the financial services sector.
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`Facebook’s Unequivocal Plans to Expand into the
`Financial Services Sector Using the META Mark
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`43.
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`As part of this rebranding effort, Facebook has taken a number of
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`deliberate, concerted steps to connect its new corporate name with services in the financial
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`services industry—including services that directly overlap with those provided by Metacapital—
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`thereby creating a likelihood of confusion between Metacapital and Facebook and causing
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`significant harm to Metacapital, its Marks, and its goodwill.
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`44.
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`For example, on December 13, 2021, less than two months after the
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`“Meta” name change announcement, Facebook publicly confirmed that it had spent $60 million
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`8
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 9 of 21
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`to purportedly acquire the trademark assets of a U.S. regional bank named Meta Financial
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`Group.1
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`45.
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`Included among these assets were a number of trademark registrations for
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`“Meta” and “Meta”-formative marks covering financial services (the “Meta Financial
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`Registrations”), including services that directly overlap with those covered by Metacapital’s
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`Registrations. For example, one such registration covers the mark META for use with, inter
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`alia, “investment advice and management services.”2
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`46.
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`On information and belief, Meta Financial Group did not use any “Meta”
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`or “Meta”-formative trademark prior to 2005, and the earliest priority date for any of the
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`trademark registrations purportedly acquired by Facebook is June 15, 2004. Accordingly, any
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`rights that Facebook may have acquired post-date and are junior to Metacapital’s priority in the
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`Marks by at least two years.
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`47.
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`Additionally, Facebook did not acquire any of the physical assets of Meta
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`Financial Group, but rather acquired only (i) company names and trade names including the
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`word “Meta;” (ii) trademark registrations and common law rights for “Meta” and “Meta”-
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`formative marks; (iii) “Meta” and “Meta”-formative domain names; and (iv) the goodwill
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`associated with the foregoing.3 Accordingly, there is serious doubt that the purported acquisition
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`was legally sufficient to grant Facebook any rights in the purported rights owned by Meta
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`Financial Group.
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` 1
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` See David French & Elizabeth Culliford, Exclusive: Facebook owner is behind $60 mln deal for Meta name rights,
`Reuters (December 13, 2021) available at https://www.reuters.com/business/media-telecom/exclusive-facebook-
`owner-is-behind-60-mln-deal-meta-name-rights-2021-12-13/.
`2 See U.S. Trademark Reg. No. 3,072,040.
`3 Meta Financial Group, Form 8-K (Dec. 13, 2021) available at https://d18rn0p25nwr6d.cloudfront.net/CIK-
`0000907471/52079c8b-0b39-4a47-9618-ceb924bca466.pdf.
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`9
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 10 of 21
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`48.
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`Regardless, Facebook’s purported acquisition of the marks owned by Meta
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`Financial Group demonstrates the minimum market value of “Meta” and “Meta”-formative
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`marks in the financial services sector. Further, Metacapital’s Marks are more valuable than those
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`Facebook attempted to acquire from Meta Financial Group, as they are senior to those marks.
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`49. More concerningly, on January 4, 2022, Facebook filed two trademark
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`applications with the U.S. Patent and Trademark Office for the marks META (U.S. Serial No.
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`97/202,620) and Design & META (U.S. Serial No. 97/202,641) covering a broad range of
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`financial services including “investment management services” and “financial management,
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`financial planning, financial forecasting, financial portfolio management and financial analysis
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`and consultation” (the “Applications”). A copy of the Applications is attached hereto as Exhibit
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`D.
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`50.
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`Such services directly overlap with those offered by Metacapital under the
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`Marks, and in particular the Registrations—which cover “investment advisory services,
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`investment management services and asset management services”4—and Facebook’s use of any
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`“Meta” mark in connection with its provision of those and other financial services set forth in the
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`Applications is likely to cause confusion with Metacapital’s existing rights.
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`51.
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`The Applications were filed under Section 1(b) of the Lanham Act,
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`indicating that Facebook is not yet using the trademarks in U.S. commerce in connection with
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`such services but intends to do so in the future. In connection with such “intent to use”
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`applications, Facebook, through its attorneys, was required to declare to the Patent and
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`Trademark Office that it has a bona fide intention to use the mark in commerce as of the filing
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`date in connection with all of the goods and services listed in the application.
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`10
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` See Exhibits A-C.
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` 4
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 11 of 21
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`52.
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`Facebook’s intentions to use the “Meta” name in association with the
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`provision of financial services—and in particular investment management and financial planning
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`services—is consistent with public statements made by the company, including by its CEO and
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`founder Mark Zuckerberg, in recent years concerning Facebook’s plans for the financial services
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`sector.
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`53. Most notably, in 2019, Facebook announced the Libra Association, a
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`cryptocurrency initiative and financial infrastructure that was founded to, in the words of Mr.
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`Zuckerberg, “give everyone access to financial tools.”5
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`54.
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`In connection with the Libra Association, Facebook published a white
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`paper that explicitly noted that one of the goals of the Libra Association was to create a
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`blockchain “to serve as a solid foundation for financial services . . . which could meet the daily
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`financial needs of billions of people,” and that their “hope is to create more access to better,
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`cheaper, and open financial services – no matter where you are, where you live, what you do, or
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`how much you have.”6
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`55.
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`Furthermore, according to the Libra (subsequently renamed “Diem”)
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`website, the overall “Vision” of the project was “[t]o enable universal access to financial
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`services.”7
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`56.
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`The Libra/Diem project was highly publicized by Facebook, with Mr.
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`Zuckerberg even providing testimony to Congress regarding the project and Facebook’s plans for
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` 5
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` Mark Zuckerberg, Opening Statement to House Financial Services Committee (October 23, 2019), available at
`https://www.youtube.com/watch?v=x9jfzh4JyLg, 3:10-3:14.
`6 Libra Association Members, An Introduction to Libra, 5, 12 (July 23, 2019), available at
`https://sls.gmu.edu/pfrt/wp-content/uploads/sites/54/2020/02/LibraWhitePaper_en_US-Rev0723.pdf.
`7 Diem, Vision, https://www.diem.com/en-us/vision/ (last visited September 6, 2022).
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`11
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 12 of 21
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`how financial services might be provided by Facebook in the future.8 Additionally, over the
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`course of the last three years, Facebook has provided numerous public updates on the status of
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`the project, and repeatedly promoted it through its various platforms.
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`57.
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`At the beginning of this year, Facebook announced that while it was not
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`continuing the Libra/Diem project, it will continue to explore virtual currencies and financial
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`services in connection with its broader “Metaverse” project.9 Accordingly, consumers are likely
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`to continue to encounter Facebook, and its newly-adopted “Meta” name, with the provision of
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`financial services in the future.
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`58.
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`Additionally, as noted, Facebook also announced earlier this year that it
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`was changing the name of its financial services unit, originally called Facebook Financial and
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`subsequently renamed Novi, to Meta Financial Technologies,10 further demonstrating
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`Facebook’s intentions to continue associating its “Meta” name with the provision of financial
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`services.
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`59.
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`Facebook also recently announced the rebranding of its “Facebook Pay”
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`service offering to “Meta Pay,” further increasing the likelihood of confusion between
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`Metacapital and Facebook. In connection with this announcement, Stephane Kasriel, Facebook’s
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`Head of Commerce and Financial Technologies, re-emphasized Facebook’s mission to
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` 8
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` Mark Zuckerberg, Opening Statement to House Financial Services Committee (October 23, 2019), available at
`https://www.youtube.com/watch?v=x9jfzh4JyLg.
`9 Luc Olinga, Facebook and Mark Zuckerberg Money Project in the Works, TheStreet.com (Apr. 6, 2022), available
`at https://www.thestreet.com/technology/facebook-zuck-buck-metaverse.
`10 Owen Thomas, Forget ‘Zuck Bucks.’ The real story is Facebook’s financial identity crisis, Protocol (Apr. 7, 2022)
`available at https://www.protocol.com/fintech/meta-financial-technology-novi-facebook.
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`12
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 13 of 21
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`“empower everyone, everywhere to access the world’s financial system to accelerate financial
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`inclusion,” and noted “the potential of the metaverse, and where it can take fintech next.”11
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`Facebook’s Actions Threaten to Harm Metacapital
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`60.
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`Facebook’s use of the term “Meta,” and in particular its purposeful and
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`direct association of the “Meta” name with financial services—including services that directly
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`overlap with those provided by Metacapital under its marks—will inevitably cause consumer
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`confusion with the Marks, and cause severe and irreparable harm to Metacapital and the
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`goodwill it has built up in the Marks over the past twenty years.
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`61. Moreover, because of the ubiquity and near-omnipresence of Facebook,
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`there is a substantial likelihood that anyone encountering the Marks will believe, incorrectly, that
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`Metacapital is the junior user, and that Metacapital is either affiliated or associated with
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`Facebook, or is attempting to trade off of Facebook’s brand and is infringing on Facebook’s
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`purported rights.
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`62.
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`Given Facebook’s substantial resources, and the plain fact that it
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`purportedly acquired the trademark rights from Meta Financial Group, it is not credible that
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`Facebook was not aware of Metacapital and its existing rights in the Marks prior to Facebook’s
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`actions described above.
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`63.
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`Nonetheless, Facebook still moved forward with its plans to adopt the
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`“Meta” name, regardless of the consequences or harm caused to Metacapital and others.
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`64.
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`Indeed, this appears to be in line with a larger attitude on Facebook’s part
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`of giving little credence to the preexisting rights of other companies, and running roughshod over
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`
`
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`11 Aisha Malik, Facebook Pay rebrands to Meta Pay as Zuckerberg details plans to create a digital wallet for the
`metaverse, TechCrunch (June 23, 2022) available at https://techcrunch.com/2022/06/23/facebook-pay-rebrands-
`meta-pay-digital-wallet-metaverse/.
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`13
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 14 of 21
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`such rights, as Facebook is engaged in at least one other lawsuit in this Court for the same
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`behavior.12
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`65.
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`As a result of this infringing use, Metacapital sent a cease and desist letter
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`to Facebook in May, 2022, asking Facebook to withdraw the Applications and confirm that it
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`would not use the “Meta” mark or any confusingly similar mark in the financial services sector.
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`However, the parties have been unable to resolve this dispute.
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`66.
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`Accordingly, Metacapital has been forced to file this suit to protect itself
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`and its rights. As a result of Facebook’s infringing conduct, (i) Metacapital has lost significant
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`value of its Marks; (ii) Metacapital’s goodwill and reputation have been irreparably damaged;
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`and (iii) Metacapital can no longer present itself to its customers or the general public without
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`being falsely associated with Facebook.
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`67. Moreover, Facebook willfully disregarded Metacapital’s prior rights and
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`the harm to Metacapital’s business that would be wrought by Facebook using a Meta or Meta-
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`formative mark in connection with the provision of financial services.
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`12 See METAx LLC v. Meta Platforms, Inc., 1:22-cv-06125 (S.D.N.Y. 2022).
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`14
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 15 of 21
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`FIRST CLAIM
`(Trademark Infringement Under 15 U.S.C. § 1114)
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`68. Metacapital incorporates by reference the allegations in the preceding
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`paragraphs of the Complaint.
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`69. Metacapital is the owner of the Registrations described in paragraphs 30
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`and 31 of this Complaint.
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`70. Metacapital uses the marks associated with the Registrations in commerce
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`in connection with the provision of financial services.
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`71. Metacapital’s marks as covered by the Registrations are incontestable,
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`valid, and enforceable against third parties, including Facebook.
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`72. Metacapital’s marks as covered by the Registrations are arbitrary, or have
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`acquired secondary meaning.
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`73.
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`Facebook has used and/or plans to use trademarks in interstate commerce,
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`which marks are confusingly similar to the marks covered by Metacapital’s Registrations, in
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`connection with the provision of financial services that are similar to those provided by
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`Metacapital under the marks covered by its Registrations.
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`74.
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`Facebook’s actions are likely to cause, have caused, and will continue to
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`cause confusion, mistake, and deception in the minds of consumers as to the source or origin of
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`Facebook’s and/or Metacapital’s services.
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`75.
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`Facebook acted with full knowledge that its actions would cause confusion
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`or mistake and deceive consumers, which constitutes a willful violation of the Lanham Act.
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`76.
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`As a result of these actions, Metacapital has suffered irreparable injury
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`and, unless Facebook’s infringement is enjoined by the Court, Metacapital will continue to suffer
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`15
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 16 of 21
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`irreparable harm. There is no adequate remedy at law for the harm caused by Facebook’s
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`infringing conduct.
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`SECOND CLAIM
`(False Designation of Origin Under 15 U.S.C. § 1125(a))
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`77. Metacapital incorporates by reference the allegations in the preceding
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`paragraphs of the Complaint.
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`78. Metacapital has and currently uses the META Mark to identify itself and
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`the source of its services.
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`79.
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`Facebook’s use of marks that are confusingly similar to Metacapital’s
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`META Mark has caused and is likely to continue to cause confusion or mistake, or to deceive
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`consumers and potential consumers, the public, and the trade concerning an affiliation,
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`connection, or association between Facebook and Metacapital when there is no such affiliation,
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`connection, or association.
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`80.
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`Facebook had knowledge of Metacapital’s prior rights and these unlawful
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`activities.
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`81.
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`Facebook’s activities constitute false designation of origin within the
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`meaning of 15 U.S.C. § 1125(a).
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`82. Metacapital has been injured by Facebook’s false and misleading
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`advertising in violation of 15 U.S.C. § 1125(a).
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`83.
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`Facebook acted willfully, with full knowledge of Metacapital’s rights in
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`the META Mark, and those acts constitute a willful violation of the Lanham Act.
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`16
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 17 of 21
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`
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`THIRD CLAIM
`(Unfair Competition Under 15 U.S.C. § 1125(a))
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`84. Metacapital incorporates by reference the allegations in the preceding
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`paragraphs of the Complaint.
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`85.
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`By virtue of having used and continuing to use the Marks in commerce,
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`Metacapital has acquired trademark rights in the Marks.
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`86.
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`The Marks are distinctive, and serve to identify Metacapital as the source
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`of the services provided under the Marks.
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`87.
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`Facebook has used and continues to use a trade name that is confusingly
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`similar to the Marks without Metacapital’s consent.
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`88.
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`Facebook’s unauthorized use in commerce of a trade name that is
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`confusingly similar to the Marks in connection with similar financial services constitutes a false
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`designation of origin or false and misleading description or representation of goods and services
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`in commerce, with knowledge of the falsity, which is likely to cause confusion, mistake, and
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`deception, and in commercial advertising and promotion, misrepresents the nature,
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`characteristics, qualities, and origin of Facebook’s commercial activities.
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`89.
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`Facebook’s activities, alleged herein, have a substantial economic effect
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`on interstate commerce.
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`90.
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`Facebook’s activities, alleged herein, constitute unfair competition within
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`the meaning of 15 U.S.C. § 1125(a).
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`91.
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`Facebook acted willfully, with full knowledge of Metacapital’s prior rights
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`in the Marks, and those acts constitute a willful violation of the Lanham Act.
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`92.
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`As a result of these actions, Metacapital has suffered irreparable injury
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`and, unless Facebook’s infringement is enjoined by the Court, Metacapital will continue to suffer
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`17
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 18 of 21
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`irreparable harm. There is no adequate remedy at law for the harm caused by Facebook’s
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`infringing conduct.
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`FOURTH CLAIM
`(Common Law Trademark Infringement)
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`93. Metacapital incorporates by reference the allegations in the preceding
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`paragraphs of the Complaint.
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`94.
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`By virtue of having used and continuing to use the Marks in commerce,
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`including in New York, Metacapital has acquired common law trademark rights in the Marks.
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`95.
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`The Marks are distinctive, and serve to identify Metacapital as the source
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`of the services provided under the Marks.
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`96.
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`Facebook’s use of a trade name that is confusingly similar to the Marks
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`infringes Metacapital’s common law trademark rights in the Marks and is likely to cause
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`confusion, mistake, or deception among consumers.
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`97.
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`By virtue of acts complained of herein, Facebook has intentionally caused
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`a likelihood of confusion among the public and has unfairly competed with Meta in violation of
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`the common law of the State of New York.
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`98.
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`As a direct and proximate result of Facebook’s common law trademark
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`infringement and unfair competition, Metacapital has suffered, and, unless Facebook is enjoined
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`by this Court, will continue to suffer irreparable injury to Metacapital’s business, reputation, and
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`goodwill in the Marks for which Metacapital has no adequate remedy at law.
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`99.
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`As a direct and proximate result of Facebook’s common law trademark
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`infringement and unfair competition, Metacapital has been forced to retain counsel to prosecute
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`this claim and is entitled to recover its attorneys’ fees and costs incurred herein.
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`18
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`Case 1:22-cv-07615 Document 1 Filed 09/07/22 Page 19 of 21
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`FIFTH CLAIM
`(Common Law Unfair Competition)
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`100. Metacapital incorporates by reference the allegations in the preceding
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`paragraphs of the Complaint.
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`101. By virtue of having used and continuing to use the Marks in commerce,
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`Metacapital has acquired trademark rights in the Marks.
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`102. The Marks are distinctive, and serve to identify Metacapital as the source
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`of the services provided under the Marks.
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`103. Facebook has used and continues to use a trade name that is confusingly
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`similar to the Marks without Metacapital’s consent.
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`104. Facebook’s unauthorized use in commerce of a trade name that is
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`confusingly similar to the Marks in connection with similar financial serv