As rival Snapchat prepares to go public, Instagram is laying claim to its name in a legal battle with Microsoft. The Facebook-owned photo sharing app has attempted to block the tech giant from federally registering its "Actiongram" trademark. That’s right; Instagram is essentially claiming rights in the “gram” suffix.
According to Instagram’s Notice of Opposition filing with the appeals arm of the U.S. Patent and Trademark Office (“USPTO”), the company believes it “will be damaged by the registration of the Actiongram mark,” as Microsoft’s “goods claimed in its application are related to the goods and services offered by Instagram in connection with its Instagram trademarks.”
Microsoft aims to register its mark in the class of goods/services that covers “Computer software for virtual reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; operating system software; computer software, namely, software for setting up, operating, configuring, and controlling wearable hardware and wearable computer peripherals.”
Instagram currently holds an array of federally registered trademarks – upwards of 14 – that apply to an array of classes of goods/services, including “computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information,” among other things.
Moreover, Instagram claims that the Actiongram trademark “is deceptively similar to the Instagram trademarks so as to cause confusion, or to cause mistake or to deceive the public as to the origin of [Microsoft’s] goods offered under the mark. Specifically, registration of [Microsoft’s] mark will lead the public to conclude, incorrectly, that [Microsoft] is or has been affiliated or connected with Instagram, and/or that [Microsoft’s] goods provided under the mark are or have been, authorized, sponsored, endorsed, or licensed by Instagram.”
As you may know, before a trademark may be registered with the USPTO (and enforced by a trademark holder on a nationwide basis as a federally registered mark, as opposed to on a state-by-state basis for common law marks), a number of requirements must be satisfied. For instance, the mark must be published for opposition in the Official Gazette, a weekly publication of the USPTO. After the mark is published, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if an opposition is unsuccessful, the application enters the next stage of the registration process.
Hardly the first action of its kind by Instagram, the wildly-popular social media app has been vigilant in opposing “-gram” related trademarks. What largely distinguishes the matter at hand from those that came before it: Microsoft has the resources to fight Instagram’s opposition, in contrast to the small entities that Instagram has targeted in the past, most of which likely just changed their names to avoid a costly legal fight.