Instagram Opposes Instalit Trademark Application

Instagram, LLC filed a notice of opposition to Instalit LLC’s request for registration of a namesake trademark on Sept. 18. The filing, submitted to the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, requests that Instagram’s opposition be sustained and the applicant’s mark be refused registration.

The opposition stated that the applicant first applied to register its “INSTALIT” mark on March 23. According to the filing, the applicant sought to register the mark in “International Class 42 for: ‘Providing use of online temporary non-downloadable software for enabling users to locate nightlife outlets using a live map; Providing use of online temporary non-downloadable software for enabling users to share digital photos and messages; (and) Providing use of online temporary non-downloadable software for enabling nightlife outlets to attract customers and advertise their venues.’”

According to the notice of opposition, Instagram, a “photo sharing and social networking service and software application” first launched in October 2010, has continuously used its trademark “INSTAGRAM.” Its numerous registrations cover a variety of goods and services, including providing the use of online temporary non-downloadable software that enables transmission of images, audiovisual, and video content; marketing, advertising and promotional services; telecommunications services, chiefly the electronic transmission of data, inclusive of messages, graphics, images, videos and information; social introduction, networking and dating services; and shopping and payment services.

Instagram argued that registration of the INSTALIT mark would be problematic for a number of reasons. First, Instagram noted that because of its “enormous and loyal user base, its multiple trademark registrations and pending applications, and other factors, the INSTAGRAM Mark is strong, enjoys widespread recognition among consumers, and has become famous within the meaning of Section 43(a) of the United States Trademark Act, 15 U.S.C. § 1125(c).”

The filing said “the applicant’s services claimed in its Application are related to the goods and services offered by Instagram in connection with its INSTAGRAM Mark.” In turn, the proposed mark is “deceptively similar to the INSTAGRAM Mark so as to cause confusion, or to cause mistake or to deceive the public as to the origin of Applicant’s services offered under Applicant’s Mark.”

Specifically, Instagram alleged that registration will likely lead to public confusion about affiliations or sponsorships between it and the applicant. Instagram also argued that the applicant’s mark will cause “dilution of the distinctive quality” of and reputational harm to its mark, in turn, harming Instagram and the general public.

Kilpatrick Townsend & Stockton LLP represents Instagram in this proceeding.