On Tuesday, Instagram, LLC filed an opposition before the Trademark Trial and Appeal Board against Instagoods Pty Ltd’s application for the INSTAGOODS trademark, citing that it will be harmed by the likelihood of consumer confusion and the dilution of its INSTAGRAM mark.
According to the opposition, the applicant seeks to register the INSTAGOODS mark in International Class 9 for “Downloadable mobile applications for purchasing a wide variety of consumer goods and obtaining information on designers, influencers, shopping events and promotions” as well as in International Class 35, which covers “On-line retail store services featuring a wide variety of consumer goods of others; Retail store services featuring a wide variety of consumer goods of others.”
Instagram asserted that since Oct. 2010, when its photo-sharing and social networking platform launched, it has continuously used the INSTAGRAM trademark in interstate commerce in the U.S. in connection with its goods and services. Accordingly, Instagram claimed that its marks cover a variety of goods and services, such as: “Shopping and payment services, including providing online facilities for connecting sellers with buyers and providing online marketplaces”; “Providing use of online temporary non-downloadable software for enabling transmission of images and audiovisual and video content”; among other things.
Instagram contended that its INSTAGRAM mark has priority over the applicant’s May 2020 application; Instagram also proffered that the INSTAGOODS mark “creates a similar commercial impression” as the INSTAGRAM mark. Furthermore, Instagram claimed that its goods and services and those offered and claimed by the applicant in the application are similar and/or related. Consequently, Instagram alleged that the INSTAGOODS 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 goods and services offered under Applicant’s Mark.”
In particular, Instagram contended that the similarity will likely cause the public to incorrectly believe that there is an affiliation or connection between the parties and their goods and services covered by their respective marks. Additionally, Instagram claimed that because of the widespread use of the INSTAGRAM mark ad publicity, there is a high degree of consumer recognition of the mark in connection with Instagram’s goods and services. Therefore, Instagram added that its mark is famous and the INSTAGOODS mark will dilute the distinctive quality of its mark and harm the reputation of the opposer’s mark.
In sum, Instagram has based its opposition on the likelihood of consumer confusion and the dilution of its mark. Instagram has sought for its opposition to be sustained and for the registration of the INSTAGOODS mark to be refused. Instagram is represented by Kilpatrick Townsend & Stockton LLP.
