Instagram Seeks To Strike Instasize’s Affirmative Defenses in TTAB Case

Instagram argued that claims made by trademark applicant Insasize should be stricken from the TTAB record in a filing Thursday before the Trademark Trial and Appeal Board (TTAB). The filing, in support of a motion for partial judgment on the pleadings, argued that Instasize’s affirmative defenses are “vague and irrelevant.”

Instagram opened its argument by stating “Instasize misconstrues the purpose of trademark law by asserting that Instagram is ‘attempting to appropriate and remove [the prefix ‘insta’] from the English language, sans existence as part of Opposer’s trademark.’” On the contrary, Instagram said its opposition “merely recognizes the likelihood of consumer confusion that would be caused by Instasize’s registration of a mark similar to INSTAGRAM for ‘[d]ownloadable mobile applications for photo editing,’ a product category that directly describes the Instagram app for which Instagram owns multiple registrations.” Instagram’s trademark registration predates Instasize’s application and argued that the similarity in name and type of product is likely to cause consumer confusion.

Instagram said that Instasize’s arguments contain no evidentiary support, describing them as “one sentence, conclusory allegations in support of its purported affirmative defenses.” Additionally, Instagram states that Instasize’s allegations are in a “bare-bones list” that “simply identifies general legal doctrines and does nothing to put Instagram on notice of the factual bases for its affirmative defenses.”

For example, Instagram asserts that the first and second affirmative defenses of laches and acquiescence “are not applicable in opposition proceedings.” Instasize said its situation is an exception because of the “opposer’s failure to object to an applicant’s earlier registration of the same or substantially same mark for the same or substantially similar goods [or services].” However, Instagram claims that Instasize never filed for an INSTASIZE trademark in the U.S. previously to the application, as a result, it did not obtain the prior registration required for the exception.

Turning to the seventh affirmative defense of bad faith and unclean hands, Instagram said the “[f]ailure to provide notice of the factual basis for an affirmative defense is a sufficient ground to strike the defense.” Instagram asserted that Instasize would not be able to support this claim even if the TTAB accepted it. Specifically, Instagram said Instasize “has not offered any authority to support its proposition that Instagram’s alleged policy toward third-party developers fits within a category of egregious misconduct that could amount to unclean hands.” Instagram further said Instasize has not “alleged any specific agreement or interaction with Instagram in which Instagram deceived Instasize regarding its trademark rights. If anything, Instasize is alleging inconsistencies in Instagram’s trademark enforcement practices,” which it claims cannot be used to support this claim.

Instagram concluded that leave to amend should be denied “is amendment would be ‘futile’” because “none of Instasize’s affirmative defenses is a cognizable affirmative defense in these circumstances.

Instagram is represented by Kilpatrick Townsend & Stockton.  Instasize is represented by Patent Law Works.