On November 11th, online photo sharing service Instagram, a subsidiary of social media giant Facebook Inc. (NASDAQ:FB), took up an action against American tech titan Microsoft Corp. (NASDAQ:MSFT) at the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). Instagram is hoping to squash a Microsoft trademark application in an action which aims to protect Instagram’s interest in the “gram” suffix portion of its name.
Instagram’s TTAB action targets U.S. Trademark Application No. 86663305, which would protect Microsoft’s use of the standard character mark “ACTIONGRAM” on goods including computer software for virtual reality realization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files, as well as computer software for controlling wearable hardware and wearable computer peripherals. The application for this trademark was filed in June 2015. Microsoft is currently offering a beta version of Actiongram, a virtual reality service for Hololens users where users can create holograms which they can share with social contacts.
The action brought by Instagram to TTAB cites 14 trademarks which have either been registered by Instagram or for which the company holds active applications. 12 of these trademarks are standard character marks for “INSTAGRAM” and protect the use of that mark on goods and services such as computer software for modifying photos, providing a website for uploading photos, Internet-based social introduction like dating services, telecommunications services and clothing. Two of the trademarks protect the word “INSTAGRAM” written in script writing for use with marketing and promotion services as well as providing online databases in the field of entertainment. The earliest use of any of these marks in commerce extends back to October 2010, the month during which Instagram was first launched. The filing includes a few grounds for opposition being argued by Instagram, including priority and likelihood of confusion, dilution by blurring and dilution by tarnishment. Some of these marks overlap with Microsoft’s Actiongram mark in Class 38, which includes trademarks registered for telecommunication, television and related services.
Instagram is an active user of TTAB and the company has been listed as a plaintiff in 43 TTAB actions this year alone. Many of the marks targeted only share the “gram” suffix, such as is the case with the challenged marks for “SONSTAGRAM”, “AMAZEGRAM” and “FAMILYGRAM”. Instagram has also gone after parties who have filed for marks including the “Insta” prefix, such as “INSTADEAL”, “INSTALIGO” and “INSTANEWS”. Instagram will also take action against parties using similar marks without going through TTAB. For example, Instagram sent a letter this April to a British man asking him to stop using the brand name “LitterGram” to advertise a service which encourages users to take pictures of trash and litter to be sent directly to local government councils. In early November, LitterGram announced that Facebook had listened to calls to drop any action to change LitterGram’s name, leaving that photo sharing service free to continue under its name.