TTAB Sustains Instagram's 2(d) Opposition to INSTASIZE for Photo Editing Software

In a 95-page opinion, the Board sustained this opposition to registration of the mark INSTASIZE for "Downloadable mobile applications for photo editing," finding confusion likely with the registered mark INSTAGRAM for "Downloadable computer software for modifying the appearance and enabling transmission of photographs." The Board found the goods legally identical, the INSTAGRAM mark famous, and the marks more similar than dissimilar. In addition, the extent of potential confusion (the twelfth DuPont factor) and evidence of the effect of use (the thirteenth DuPont factor) weighed in favor of Instagram. This blog post will attempt to hit the high points, if there are any. Instagram, LLC v. Instasize, Inc., Opposition No. 91253078 (July 15, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

Instasize argued that the parties’ apps perform different functions – its app is for photo editing while opposer’s app is for photo sharing – and that, as a result, the goods are not identical or even related, and consumers would not be confused. The Board pointed out, however, that it must base its decision on the language of the identifications of goods and not “real world conditions.” Likewise, applicant's argument that the apps travel in different channels of trade was irrelevant, since there are no such imitations in the application or registration and the identical goods presumably trave in the same trade channels. 

The Board noted that the parties offer their respective apps for free, and consumers of low-cost products “have long been held to a lesser standard of purchasing care," and also that "the least sophisticated consumers of the parties’ mobile apps are likely to exercise a lesser degree of care."

Turning to the strength of the INSTAGRAM mark, opposer's evidence indicated that it has 2 billion (2,000,000,000) users worldwide. Although the data was not limited to the United States, "it is reasonable to infer that a substantial portion of active accounts holders are based in the United States, particularly in light of the fact that Opposer is a U.S.-based company." The evidence also directly showed substantial revenues and advertising expenditures in the U.S.

Opposer’s somewhat dated marketing reports and survey evidence demonstrated that INSTAGRAM has been shown to be a strong brand. And the Board gave Opposer's enforcement activities some probative weight.

Instasize argued that the INSTA element of opposer's mark is weak, since it means instant, and GRAM  is also weak, since it means “the idea of recording something in your life." It pointed to 16 third-party registered marks containing the term INSTA, but the Board pooh-poohed 11 of them because they were not for identical goods (and tossed out a twelfth as not being based on use). [This makes no sense to me. If the third-party registrations show that insta means instant, whey isn't that relevant to consumer perception? Do consumers forget the meaning just because the term is not being used for an identical product? - ed.] The remaining five registrations were not enough to make a dent in the INSTAGRAM mark. 

As to Instasize's evidence of numerous third-party uses of "INSTA" in app names, opposer countered with its evidence of secondary meaning and the Board accepted opposer's expert testimony based on a 2016 research study. The Board concluded that INSTAGRAM is "famous for a mobile app for modifying the appearance and enabling the transmission of photographs, images, audio-visual content and video content."

As to the marks, Instasize started behind the 8-ball since a lesser degree of similarity is required between the marks when the goods are identical. To make matters worse, the Board found INSTA to be the dominant element of both marks. 

Instagram repeatedly promoted its app for use with INSTAGRAM. The Board concluded that Instasize's mark "conveys a meaning and commercial impression that its app is intended to be used to resize photos for sharing on Opposer’s INASTAGRAM app." A consumer survey showing a net rate of 44.0% confusion was "strongly probative of a likelihood of confusion." 

In sum, "[c]onsumers encountering Applicant’s mark are thus likely to mistakenly believe that INSTASIZE is an app sponsored or approved by Opposer for use with Opposer’s INSTAGRAM app." And so, the Board sustained the opposition.

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TTABlogger comment: This was a shellacking.

Text Copyright John L. Welch 2024.