Instagram Files TTAB Opposition Against Gradient Square Design

Instagram filed a notice of opposition Wednesday before the Trademark Trial and Appeal Board against Zibo Youjia Network Technology Co. Ltd.’s application for a rounded square gradient design, asserting that the applicant’s design likely will cause consumer confusion.

Instagram alleged that it will be harmed by the registration of the Rounded Square Gradient Design mark, in International Class 9, covering: “Downloadable computer software for taking, editing, and sharing photos and videos; Downloadable mobile applications for taking, editing, and sharing photos and videos; Recorded computer software for taking, editing, and sharing photos and videos.” The applicant’s mark is shown below:

The design used by the trademark applicants.

Instagram, owner of the synonymous photo and video sharing and editing app and social network, which launched in 2010, claimed that it owns the exclusive rights to the Instagram mark, Instagram stylized mark, Spectrum Multi-Color Gradient Mark, the Multi-Color Camera App Icon, and Multi-Color Camera Logo Glyph, along with the Layout Icon, among others, as shown below:

Instagram’s app icon and a version with only the gradient background.

Moreover, Instagram added that it has used the Multicolor Camera App Icon and its Spectrum Multi-Color Gradient Mark, collectively, the “Instagram Spectrum Gradient Marks,” in its various trademark registrations and applications. Accordingly, Instagram’s marks cover, for example, “(s)oftware for creating, editing, and sharing photos and videos”; “(s)oftware for modifying and enabling transmission of images and audiovisual and video content”; and “(s)oftware for managing social networking profiles and accounts,” among other things.

Instagram proffered that the Instagram Spectrum Gradient Marks are highly distinctive, particularly in connection with Instagram’s goods and services. Instagram added that these marks have priority over the applicant’s application, which claims first use of the marks in September 2019. According to Instagram, the applicant’s mark “creates a similar commercial impression as the Instagram Spectrum Gradient Marks,” noting that the offered goods and services under both Instagram and its marks and the applicant’s mark are similar. Instagram pointed to the fact that the applicant has been using its Rounded Square Gradient Design mark “in connection with a mobile app for editing photos and videos for sharing on social media platforms” available on the Google Play store under the developer name Square Quick & Pic Collage Maker. Furthermore, Instagram claimed that the applicant uses the following gradient designs for its mobile apps with the same developer name on Google Play and other app stores:

Other Instagram Spectrum Gradient Marks

Instagram contended that all of the applicant’s gradient design marks are used in connection with photo and video editing and sharing apps that imitate the Instagram Spectrum Gradient Marks. Instagram added that the applicant’s gradient design marks are advertised to use for Instagram, making statements such as “post your size photos and collage to Instagram quickly or resize photos to fit Instagram.”

Consequently, Instagram averred that the applicant’s Rounded Square Gradient Design mark is “deceptively similar” to the opposer’s Instagram Spectrum Gradient Mark that it is likely to cause consumer confusion, mistake, or deception regarding the origin of the applicant’s goods and services offered under its mark. Additionally, Instagram proffered that consumers could falsely assume an affiliation or connection between Instagram and the applicant and their services under the marks. Therefore, Instagram alleged that it will be harmed by the registration of the applicant’s mark.

Instagram seeks for its opposition to be sustained and for the applicant’s registration to be refused. Instagram is represented by Kilpatrick Townsend & Stockton LLP.