Thinking of desirable commercial social media business platforms, Instagram has risen to be one of the most sought-after social media companies with over 600 million users across the globe. By offering a great opportunity to market and present the brands to the customer base in an exceptional way, Instagram has stood out for businesses, and has shown remarkable growth in popularity among celebrities and companies alike. In this head-to-head race to provide a diverse merchandising social media platform, Instagram, LLC found itself amidst yet another trademark clash; this time against the registration of the mark THRIFTAGRAM filed by Thriftagram.com, early last November. Instagram, LLC in its opposition to the Trademark Trial and Appeal Board sought to sustain the opposition as well as the refusal of registration of mark – THRIFTAGRAM
In consonance with Instagram’s opposition against Thriftagram.com, given the close proximity of the goods and services in which Thriftagram.com seeks to register its THRIFTAGRAM mark, i.e., under International Class 35, and the already registered and distinguished trademark of Instagram, LLC, Thriftagram.com could most probably stimulate the best use of the confusion that would very likely be caused in case THRIFTAGRAM is registered.
Akin to the goods and/ or services offered by Instagram, Thriftagram.com also intends to provide services falling under International Class 35 dealing in a similar line of services like Instagram. This class is inclusive of a wide range of services, such as advertising, marketing as well as promotional services. Instagram has a long standing and established trademark, and it is not the first time that it has confronted a trademark related issue against another party. Instagram had earlier filed a similar opposition with the TTAB against Instalit LLC which sought to register the mark – INSTALIT.
In the current scenario, the INSTAGRAM and THRIFTAGRAM marks are not identical marks, nevertheless, there is a high likelihood of confusion in comparison to prior-filed trademark. It is important to note that two marks neither have to be identical nor do they have to have any related usage with identical products or services. Instagram sought refusal of the registration of Thriftagram.com’s trademark application, not in relation to the fact that the mark or goods and/ or services offered are potentially confusing, but, to the fact that there is a likelihood of misunderstanding with respect to the source or the origin of the goods and/ or services because of the marks used in connection with the goods. In E.I du Pont de Nemours & Co., the court emphasised on the degree of how related the marks are and whether registration of the trademark could or could not be allowed accordingly. It is a settled position of law that the two major factors to be looked into for each case shall be: a.) similarity or dissimilarity of the marks; b.) relatedness of the goods or services as explained in the application and registration.
The most prominent ground of opposition taken by Instagram is under Section 2(d), of the US Trademark Act, 1946 (‘the Act’) which deals with ‘likelihood of confusion’. The Act prohibits registration of a trademark which is confusingly similar to the trademark of goods and/ or services already existing or is registered. Instagram inclined upon this ground due to the easy dubiety that could be caused between THRIFTAGRAM and INSTAGRAM. The propensity of the loyal consumer base of Instagram to positively switch to Thriftagram.com is higher if THRIFTAGRAM becomes a registered trademark. This is due to the fact that Instagram already owns various INSTAGRAM and related registered trademarks.
The other grounds of opposition resorted to by Instagram were grounds as provided under Sections 1(b), 44(e) or 66(a) of the Act. If an application for trademark is filed under Section 1(b) of the Act, it insinuates an intention to use, despite the user not having used it yet. In this particular case, the opponent claimed that the trademark, i.e., INSTAGRAM would be vandalised as there was no bona fide intent of Thriftagram.com to use the mark in commerce for identified goods or services. Section 44(e) of the Act purveys in use in commerce by the foreign applicant as a requirement prior to securing a US trademark registration. Section 66(a) of the Act is regarding the requirement of request for extending the protection of an international registration in the US.
Instagram in its opposition asserted that as of June 3, 2020, Thriftagram.com had voluntarily diluted itself and its website was “inactive, does not exist, or is not available and does not show usage of Applicant’s Mark”. This is indicative of the fact that Thriftagram.com had no plans of making use of the mark in commerce.
The last but not the least ground for opposition relied by Instagram was under Section 2 and 43(c) of the Act which concurrently deal with dilution by blurring. Section 2 of the Act explicitly divulges into enlisting the accounts on which the trademark of goods shall be refused registration. Section 43(c) specifically deals with dilution by blurring. Instagram claimed that Thriftagram.com’s use of the mark, THRIFTAGRAM would lead to blurring the distinctiveness of the illustrious trademark of INSTAGRAM. Blurring causes weakening of the individualism of the originally registered trademark. In layman terms, if a consumer is viewing an unauthorized version of a famous mark and is nudged to the thought of the more famous mark, then it amounts to dilution by blurring and this is a common claim of dilution. In the case under consideration, Instagram claimed that the THRIFTAGRAM mark could potentially cause confusion or deception about the source of the goods and/ or services. In this instance, Instagram made attempts to manifestly exhibit that its existing trademark, i.e. INSTAGRAM mark is highly acclaimed and is highly prone to encounter an infringement case in the near future.
Wrapping up the Instagram versus Thriftagram battle, it can evidently be said that having garnered such a colossal feat in such a short span of time, Instagram is extremely aware of its intellectual property rights. Despite Instagram’s grave seriousness towards the matter, the answer to the question as to whether its trademark is confusing enough for its users or potential users depends on multiple factors, such as goods and services, a perception held by its consumers, the marketplace of the trademarks, and so on. Estimating by the frequency of Instagram’s filing of oppositions against these upcoming service providers, it is evident that it is serious about crushing all competition before they get too strong. However, having faced with frequent trademark-related issues, Instagram might be trying to claim monopoly over the market indirectly, which by the settled principle in trade mark law cannot be a successful ground for claiming infringement of trade mark.