On Friday, Twitter filed a notice of opposition before the Trademark Trial and Appeal Board against applicant Puerto Rican company B. Fernandez & Hnos.’s application for the TWEET mark, asserting that it will be harmed if the applicant’s mark is registered.
WhatsApp Inc. has filed an opposition to WhatsPay doing business as OmegaSoft Technology LLC’s proposed “WHATSPAY” trademark and accompanying design. After extending its deadline to file the opposition, WhatsApp contended that the filing before the Trademark Trial and Appeal Board (TTAB) is timely.The opposition stated that OmegaSoft is a South Carolina company. It allegedly filed an application in January, seeking to use its WHATSPAY trademark for “downloadable computer software for use as an electronic wallet.”
Opposition Number: 91265489 Filing Date: 10/19/2020 Status: Pending Status Date: 10/19/2020 ESTTA Tracking number: ESTTA1089623
Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) No use of mark in commerce before application or amendment to allege use was filed Trademark Act Sections 1(a) and (c) False suggestion of a connection with persons,living or dead, institutions, beliefs, or national symbols, or brings them into contempt, or disrepute Trademark Act Section 2(a)
Instagram filed an opposition to the registration of Market Organization Inc.’s INSTAGEM trademark on Friday before the Trademark Trial and Appeal Board (TTAB), claiming the INSTAGEM trademark will cause consumer confusion and damage Instagram.
Word Mark INSTAGEM Goods and Services IC 041. G & S: Video editing Standard Characters Claimed Serial Number 88767055 Filing Date January 21, 2020 Current Basis 1B Original Filing Basis 1B Published for Opposition June 23, 2020 Owner (APPLICANT) Market Organization Inc. Type of Mark SERVICE MARK Register PRINCIPAL Live/Dead Indicator LIVE
Opposition by Instagram
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.
Plans by the Duke and Duchess of Sussex to trademark their Sussex Royal brand could face an official challenge. A “notice of threatened opposition” was filed with the Intellectual Property Office, giving the complainant a month to lodge a formal objection.That is now being rescinded, after an Australian doctor named in the filing said his details had been used without permission
Sportswear giant Adidas has filed an opposition to the trademark application of Turner Sports’ esports venture ELEAGUE. After nearly 18 months of events, ELEAGUE has established itself as one of the top broadcasters in esports. With its second Counter-Strike: Global Offensive Major coming up in January, the Turner Sports venture is going from strength to strength. The opposition relates to ELEAGUE’s “E” logo, which consists of three lines. Adidas contends that that logo is too similar to its classic three l