On Friday before the Trademark Trial and Appeal Board, Instagram filed an opposition against applicant R3 Media Corporation’s application for the INSTAKARMA mark alleging that it will be damaged if the applicant’s mark is registered because of the likelihood of consumer confusion and the dilution of its mark.
According to the filing, the applicant has sought to register INSTAKARMA in International Class 9 and 41, covering “Downloadable software in the nature of a mobile application for presenting content in an easy-to-understand user interface, to a user based on a scanned code” and “Entertainment services, namely, an ongoing multimedia program featuring film, tv series, music concerts…distributed via various platforms across multiple forms of transmission media,” respectively.
Instagram stated that it has continuously used the INSTAGRAM mark in interstate commerce in the United States “[s]ince the launch of its photo sharing and social networking service and software application in October 2010.” The INSTAGRAM mark covers a variety of goods and services, such as “Providing use of online temporary non-downloadable software for enabling transmission of images and audiovisual and video content” and “for social networking…”; “Downloadable and non-downloadable computer software for modifying the appearance and enabling transmission of images, audio-visual and video content”; “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information”; among other things.
Instagram averred that its INSTAGRAM mark “is highly distinctive” in connection to its goods and services. Moreover, Instagram claimed that its mark has priority over the applicant’s application, which was filed in January 2020 “on an intent-to-use basis” because Instagram has used the INSTAGRAM mark before the applicant has used the INSTAKARMA mark. Additionally, Instagram asserted that the INSTAKARMA mark “creates a similar commercial impression as the INSTAGRAM Mark” and that R3 Media’s services covered in its application are purportedly related to Instagram’s covered goods and services. According to Instagram, the applicant’s mark is “deceptively similar to the INSTAGRAM Mark to 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.” As a result, Instagram averred that there is a likelihood of consumer confusion and that consumers will mistakenly believe that there is an affiliation, authorization, sponsorship, license or connection between Instagram and the applicant’s mark. Consequently, Instagram contended that it will be damaged if the INSTAKARMA mark is registered.
Additionally, Instagram proffered that the “widespread use of” and the “high degree of consumer recognition of” the INSTAGRAM mark, as well as Instagram’s “enormous and loyal user base” and Instagram’s numerous trademarks, means that its mark is “strong,” there is a lot of consumer recognition, and the INSTAGRAM mark is famous; this allegedly happened before the applicant filed the trademark application for INSTAKARMA. Instagram claimed that the INSTAKARMA mark has diluted or is likely to dilute the distinctive quality of the INSTAGRAM mark and it will purportedly harm the INSTAGRAM mark reputation. Therefore, Instagram contended that the INSTAKARMA mark should not be registered.
For the aforementioned reasons, Instagram asserted that the opposition should be sustained and the applicant’s registration should be refused.
Instagram is represented by Kilpatrick Townsend & Stockton LLP.
