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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application No. 88/767,055
Filed: January 21, 2020
Published: June 23, 2020, in the Official Gazette
For: INSTAGEM INSTAGRAM, LLC, Opposer,
vs.
Market Organization, Inc., Applicant.
Opposition No. _____________

NOTICE OF OPPOSITION UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, Virginia 22313-1451

Dear Sir or Madam:
1. Instagram, LLC (“Opposer” or “Instagram”) believes it will be damaged by the registration of the mark INSTAGEM (“Applicant’s Mark”) covered by Application Serial No.88/767,055 (the “Application”), which was filed on January 21, 2020, by Market Organization, Inc.(“Applicant”), and hereby opposes such registration. This Notice of Opposition has been timely filed.

As grounds for its Opposition, Opposer alleges as follows:
2. Instagram is a Delaware limited liability company with its headquarters and principal place of business at 1601 Willow Road, Menlo Park, California 94025.
3. Applicant is, upon information and belief, a New York corporation located at 6 E 45 Street, 20th Floor, New York, New York 10017.
4. Regarding the Application, as published in the Official Gazette dated June 23, 2020, Applicant seeks to register the mark INSTAGEM in International Class 41 for: “Video editing.”
5. Since the launch of its photo sharing and social networking service and software application in October 2010, Instagram has continuously used the trademark INSTAGRAM in interstate commerce in the United States in connection with its goods and services. Reflecting its trademark rights, Instagram owns U.S. registrations and applications for its INSTAGRAM mark,
including the following:
Trademark Reg. No. Reg. Date First Use Date
INSTAGRAM 4146057 5/22/2012 10/6/2010
INSTAGRAM 4756754 6/16/2015 11/1/2013
INSTAGRAM(stylized) 4795634 8/18/2015 5/13/2013
INSTAGRAM 4822600 9/29/2015 10/6/2010
INSTAGRAM 4827509 10/6/2015 10/6/2010
INSTAGRAM 4856047 11/17/2015 10/6/2010
INSTAGRAM 4863594 12/1/2015 10/6/2010
INSTAGRAM 4863595 12/1/2015 10/6/2010
INSTAGRAM(stylized) 5019151 8/9/2016 11/01/2013
INSTAGRAM 5566030 9/18/2018 11/5/2012
INSTAGRAM 5869731 9/24/2019 3/19/2019
These registrations and applications cover a variety of goods and services, including but not limited to the following:
 Providing use of online temporary non-downloadable software for enabling transmission of images and audiovisual and video content;
 Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data;
 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;
 Providing computer, electronic and online databases in the field of entertainment;
 Marketing, advertising and promotion services;
 Telecommunications services, namely electronic transmission of data, messages, graphics, images, videos and information;
 Computer services, namely providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts;
 Social introduction, networking and dating services; and
 Shopping and payment services.
All of Instagram’s marks featuring the term INSTAGRAM are referred to herein as the “INSTAGRAM Mark.” Attached as Exhibit A are certificates of registration and current TSDR records for U.S. registrations of the INSTAGRAM Mark.
6. The INSTAGRAM Mark is highly distinctive with regard to all of Instagram’s goods and services in connection with which the mark is used.
7. Instagram’s INSTAGRAM Mark has priority over Applicant’s Application, which was filed on January 21, 2020, on a 1(b) “intent to use” filing basis.
8. Applicant’s INSTAGEM Mark creates a similar commercial impression as the INSTAGRAM Mark does.
9. Applicant’s services claimed in its Application are nearly identical to the goods and services offered by Instagram in connection with its INSTAGRAM Mark.
10. Applicant’s 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 offeredunder Applicant’s Mark. Specifically, registration of Applicant’s Mark will lead the public to conclude, incorrectly, that Applicant is or has been affiliated or connected with Instagram, and/or that Applicant’s services provided under Applicant’s Mark are, or have been, authorized, sponsored, endorsed, or licensed by Instagram. Issuance of any registration to Applicant for the proposed mark will result in damage to Instagram and the public. Therefore, registration of Applicant’s Mark is prohibited by 15 U.S.C. §1052(d).
11. Moreover, through Instagram’s widespread use of the INSTAGRAM Mark, extensive and continuous media coverage, the high degree of consumer recognition of the INSTAGRAM Mark, Instagram’s 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).
12. Applicant’s Mark has caused or is likely to cause dilution of the distinctive quality of the INSTAGRAM Mark and/or harm the reputation of the INSTAGRAM Mark in violation of 15 U.S.C. § 1125(c), to the harm and damage of Instagram and the public.
13. The INSTAGRAM Mark was famous before Applicant filed the Application at issue and before Applicant began using Applicant’s Mark.
14. Therefore, registration of Applicant’s Mark should be refused under 15 U.S.C. §§ 1052 and 1063(a).
15. Registration of Applicant’s Mark would constitute prima facie evidence of the validity of such registration, Applicant’s ownership of Applicant’s Mark, and Applicant’s exclusive right to use the INSTAGEM mark pursuant to the provisions of 15 U.S.C. § 1057(b). Such registration would be a source of damage and injury to Instagram and the public, and would be contrary to the principles of registration set out in 15 U.S.C. §§ 1051 et seq.

WHEREFORE, Instagram prays that this Opposition be sustained, and that registration to Applicant for the mark covered by Application Serial No. 88/767,055, be refused. Please direct all notices, pleadings and process regarding this matter to the below.

Respectfully submitted,
KILPATRICK TOWNSEND & STOCKTON LLP
Dated: July 10, 2020