Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1064249
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`Filing date:
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`06/25/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91253078
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`Party
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`Correspondence
`Address
`
`Plaintiff
`Instagram, LLC
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`KOLLIN J. ZIMMERMANN
`KILPATRICK TOWNSEND & STOCKTON LLP
`1801 CENTURY PARK EAST, SUITE 2300
`LOS ANGELES, CA 90067
`UNITED STATES
`TMaxim@kilpatricktownsend.com, YMin@kilpatricktownsend.com, AAl-
`bertson@kilpatricktownsend.com, LMcFarland@kilpatricktownsend.com, tmad-
`min@kilpatricktownsend.com, SJoachimsthaler@kilpatricktownsend.com, kzim-
`mermann@kilpatricktownsend.com
`310-248-3830
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Reply in Support of Motion
`
`Trevor Maxim
`
`TMaxim@kilpatricktownsend.com, YMin@kilpatricktownsend.com, AAl-
`bertson@kilpatricktownsend.com, LMcFarland@kilpatricktownsend.com, tmad-
`min@kilpatricktownsend.com, SJoachimsthaler@kilpatricktownsend.com, kzim-
`mermann@kilpatricktownsend.com
`
`/Trevor Maxim/
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`06/25/2020
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`2020.06.25 INSTASIZE - Instagram Reply ISO MJOP-Motion to
`Strike.PDF(34147 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`INSTAGRAM, LLC,
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`Opposition No. 91253078
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`Opposer,
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`vs.
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`INSTASIZE, INC.,
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`Applicant.
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`
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`OPPOSER INSTAGRAM, LLC’S
`REPLY IN SUPPORT OF MOTION
`FOR PARTIAL JUDGMENT ON THE
`PLEADINGS, OR IN THE
`ALTERNATIVE, MOTION TO
`STRIKE APPLICANT’S
`AFFIRMATIVE DEFENSES
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`Opposer Instagram, LLC (“Instagram”) submits this reply in support of its motion for
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`partial judgment on the pleadings as to Applicant Instasize, Inc.’s (“Instasize”) affirmative
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`defenses, or alternatively, for an order striking Instasize’s affirmative defenses.
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`I.
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`Introduction
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`Instasize misconstrues the purpose of trademark law by asserting that Instagram is
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`“attempting to appropriate and remove [the prefix “insta”] from the English language, sans
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`existence as part of Opposer’s trademark.” Opp. at 1. To the contrary, Instagram’s opposition
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`merely recognizes the likelihood of consumer confusion that would be caused by Instasize’s
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`registration of a mark similar to INSTAGRAM for “[d]ownloadable mobile applications for
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`photo editing,” a product category that directly describes the Instagram app for which Instagram
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`owns multiple registrations evidencing its prior rights. Instasize cannot escape this obvious
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`conflict by asserting vague and irrelevant affirmative defenses that will only add to litigation
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`expenses for both sides. While Instagram appreciates Instasize’s willingness to voluntarily
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`73503945V.4 098106/0938153
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`withdraw several of its defenses, the remaining defenses are equally insufficient and Instasize’s
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`argument provides no basis to save them.
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`II.
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`The Board Should Enter Partial Judgment on the Pleadings and/or Strike
`Applicant’s Affirmative Defenses.
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`As set forth in the authorities cited in Instagram’s Motion, this Board should strike
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`affirmative defenses that are nothing more than boilerplate allegations, unsupported by any facts.
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`Instasize’s affirmative defenses each contain a single conclusory sentence, with no factual
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`support whatsoever. For this reason alone, Instasize’s affirmative defenses should be stricken.
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`Instasize quotes Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36
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`USPQ 2d 1221, 1223 (TTAB 1995) and argues that “the Board may decline to strike even
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`objectionable pleadings where their inclusion will not prejudice the adverse party, but will
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`provide fuller notice of the basis for a claim or defense.” Opp. at 3. As an initial matter, the
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`opinion in Order of Sons of Italy in America simply does not include the quoted language, nor
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`does it stand for the proposition put forth by Instasize. In fact, in that case, there was no
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`mention of a “prejudice” requirement, and the Board granted a motion to strike two of the
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`applicant’s three affirmative defenses on the ground that they were legally insufficient and
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`redundant. The only affirmative defense that was not stricken in that case was one that the Board
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`considered “an amplification of applicant's denial of opposer's claims” because it gave opposer
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`“more complete notice of applicant's position” by indicating the type of evidence the applicant
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`may seek to introduce at trial. Id. at *3.
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`Here, however, Instasize’s one-sentence, conclusory allegations in support of its
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`purported affirmative defenses do not provide “more complete notice” of Instasize’s position or
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`the evidence Instasize may rely on. Rather, Instasize’s bare-bones list of allegations simply
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`identifies general legal doctrines and does nothing to put Instagram on notice of the factual bases
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`73503945V.4 098106/0938153
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`for its affirmative defenses. In addition, even if a showing of “prejudice” were required, it would
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`be satisfied in this case. Unless Instasize’s irrelevant and insufficient “affirmative defenses” are
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`stricken, Instagram will need to expend additional time and resources addressing the “merits” of
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`these unsupported allegations in discovery and at summary judgment or trial – a burden that
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`Instagram should not have to bear. See Villa v. Ally Fin., Inc., 2014 WL 800450, at *4 (M.D.N.C.
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`Feb. 28, 2014) (“Irrelevant affirmative defenses prejudice plaintiffs where they result in
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`increased time and expense of trial, including the possibility of extensive and burdensome
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`discovery.”). Accordingly, Instasize’s argument should be rejected, and its affirmative defenses
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`should be stricken.
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`A. First and Second Affirmative Defenses – Laches and Acquiescence
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`Instasize acknowledges the general rule that the defenses of laches and acquiescence are
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`not applicable in opposition proceedings. In arguing that this situation presents an exception to
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`the general rule, Instasize cites a non-precedential decision stating that laches can be considered
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`based on “an opposer’s failure to object to an applicant’s earlier registration of the same or
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`substantially same mark for the same or substantially similar goods [or services].” Volkswagen
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`Ag, No. 2004, 2008 WL 4354190, at *6 (Sept. 10, 2008) (emphasis added).
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`Here, Instasize has never even filed an application for the INSTASIZE mark in the U.S.1
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`prior to the instant application, let alone obtained a prior registration required to possibly trigger
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`1 Instasize filed a trademark application for INSTASIZE in Brazil on November 11, 2015,
`Instagram timely filed an opposition on February 1, 2016, and the Brazilian Trademark Office
`ruled in Instagram’s favor and denied Instasize’s application on May 8, 2018.
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`the exception on which Instasize seeks to rely. So Instasize’s argument cannot apply, and its
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`laches defense should be stricken/dismissed.
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`Instasize argues that its application was filed five years ago and that this somehow forms
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`a basis to assert a laches or acquiescence defense. But it is well settled that in a TTAB opposition
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`proceeding, the relevant time period for purposes of laches and acquiescence “start[s] to run
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`from the time the mark is published for opposition, not from the time of knowledge of use.”
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`Lodestar Anstalt, 91216163, 2017 WL 513974, at *3 (TTAB Feb. 2, 2017) (citing Nat'l Cable
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`Television Ass'n Inc. v. Am. Cinema Editors Inc., 937 F.2d 1572 (Fed. Cir. 1991)) (striking
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`affirmative defenses of laches and acquiescence where opposition was timely filed and applicant
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`provided no factual bases to support defenses). Three days after the INSTASIZE application was
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`published for opposition, Instagram opposed. Instagram filed its opposition at the first
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`opportunity and thus cannot be accused of undue delay as a matter of law. Instasize’s laches and
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`acquiescence defenses should therefore be dismissed/stricken.
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`B. Seventh Affirmative Defense – Bad Faith and Unclean Hands
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`Failure to provide notice of the factual basis for an affirmative defense is a sufficient
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`ground to strike the defense. See TBMP §§ 506, 311.02(b). Instasize’s seventh affirmative
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`defense simply reads, “Opposer’s claims are barred by the doctrine of bad faith and unclean
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`hands.” Thus, the purported defense does nothing more than state a legal conclusion, has no
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`factual support, and should be stricken for this reason alone. See, e.g., Lodestar Anstalt, 2017
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`WL 513974, at *3-*5 (striking both opposer’s and applicant’s “bald pleadings” of unclean hands
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`that merely “list[ed] the[] defense[] by name” and “provided no further facts upon which [it]
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`might plausibly be based”); Arabica Funding, Inc., & Caribou Coffee Co., Inc., No. 91202224,
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`2013 WL 11247193, at *2 (TTAB June 26, 2013) (striking “bald, conclusory allegation” of
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`unclean hands sua sponte “for being legally insufficient”).
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`Even if the Board were to consider Instasize’s improper additional allegations in its
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`opposition brief, Instasize still could not support a cognizable unclean hands defense.2
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`“Trademark law's unclean hands defense springs from the rationale that ‘it is essential that the
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`plaintiff should not in his trade mark, or in his advertisements and business, be himself guilty of
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`any false or misleading representation.’” Japan Telecom, Inc. v. Japan Telecom Am. Inc., 287
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`F.3d 866, 870 (9th Cir. 2002) (quoting Worden v. Cal. Fig Syrup Co., 187 U.S. 516, 528 (1903)).
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`In the trademark context, “courts require clear, convincing evidence of ‘egregious’ misconduct
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`before invoking the doctrine of unclean hands.” Citizens Fin. Grp., Inc. v. Citizens Nat. Bank of
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`Evans City, 383 F.3d 110, 129 (3d Cir. 2004). Further, “the concept of unclean hands must be
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`related to a plaintiff's claim, and misconduct unrelated to the claim in which it is asserted as a
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`defense does not constitute unclean hands.” Tony Lama Co., Inc. v. Anthony Di Stefano, 206
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`U.S.P.Q. 176, 179 (TTAB 1980).
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`Courts have found unclean hands to bar relief in circumstances such as filing false
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`statements and specimens of use with the USPTO, Amusement Art, LLC v. Life is Beautiful, LLC,
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`No. 214CV08290DDPJPR, 2016 WL 6998566, at *7 (C.D. Cal. Nov. 29, 2016), aff'd, 768 F.
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`App'x 683 (9th Cir. 2019), and misuse of the trademark registration symbol for a mark that has
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`2 Instasize has also asserted “bad faith,” which can be considered an equitable defense
`interchangeable with unclean hands. See Patsy's Italian Rest., Inc. v. Banas, 575 F. Supp. 2d 427,
`457 (E.D.N.Y. 2008), aff'd, 658 F.3d 254 (2d Cir. 2011) (addressing “defenses of unclean hands
`and bad faith” together).
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`never been registered. Urecal Corp. v. Masters, 413 F. Supp. 873, 876 (N.D. Ill. 1976). On the
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`other hand, an opposer’s alleged inconsistencies in its trademark enforcement practices with
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`third parties does not support an unclean hands defense. For example, the TTAB held that
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`unclean hands was “not properly applicable” where an applicant complained that the opposer,
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`owner of the HERSHEY’S KISSES mark, enforced against “all forms of use of the term ‘KISS’
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`or ‘KISSES’ illegally on the basis of a claim of an exclusive legal right to these terms” when the
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`opposer had disclaimed the term “KISSES” with the USPTO. Hershey Foods Corp., 195
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`U.S.P.Q. 246, at *7 (TTAB 1977). The Board found that “opposer's asserted representations . . .
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`were directed at third persons with whom applicant was not, in any way, in privity,” and that the
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`opposer “did not . . . intend to deceive the third persons as to their rights.” Id. Similarly in federal
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`court, an allegation that the plaintiff in a trademark case “selectively enforced its mark” was
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`“insufficient to support a defense of unclean hands,” as the allegation did not show that
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`plaintiff’s “conduct is inequitable or that it relates to the subject matter of this case.” R & R
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`Partners, Inc. v. Tovar, 447 F. Supp. 2d 1141, 1150 (D. Nev. 2006).
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`Instasize has not offered any authority to support its proposition that Instagram’s alleged
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`policy toward third-party developers fits within a category of egregious misconduct that could
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`amount to unclean hands. A policy toward third parties does not relate to the claims at issue
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`between Instagram and Instasize, as required for unclean hands to apply. Instasize has not
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`alleged any specific agreement or interaction with Instagram in which Instagram deceived
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`Instasize regarding its trademark rights. If anything, Instasize is alleging inconsistencies in
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`Instagram’s trademark enforcement practices, which also cannot supply a foundation for unclean
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`hands. Accordingly, even if the Board is inclined to consider Instasize’s belated explanation of
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`bad faith and unclean hands, the defense fails on the merits and should be stricken as
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`inapplicable.
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`III.
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`Leave to Amend Should be Denied
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`Leave to amend a pleading should be denied if amendment would be “futile.” See, e.g.,
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`Sunnen Products Co., No. 69733, 1987 WL 123805, at *1 (TTAB Jan. 21, 1987) (denying
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`motion to amend to add unclean hands defense as futile where applicant did not establish
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`substantive basis); Together Networks Holdings Ltd., 2015 WL 9906649, at *2-3 (TTAB Sept. 9,
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`2015) (denying motion to amend to add affirmative defenses as futile where certain defenses
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`were “improper” and “without basis”); World Wildlife Fund, Inc., No. 91234801, 2018 WL
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`3548440, at *5 (TTAB July 20, 2018) (denying leave to amend to assert affirmative defense
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`where the asserted bases “do not meet the strict standards of the defense; thus, the defense is
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`futile”). Here, none of Instasize’s affirmative defenses is a cognizable affirmative defense in
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`these circumstances. Thus, amendment would be futile, and leave to amend should be denied.
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`IV.
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`Conclusion
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`For the reasons stated above and set forth in Instagram’s motion, Instagram respectfully
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`requests that the Board enter partial judgment on the pleadings and/or strike all of Applicant’s
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`affirmative defenses, without leave to amend.
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`73503945V.4 098106/0938153
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`Dated: June 25, 2020
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` Respectfully submitted,
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`KILPATRICK TOWNSEND & STOCKTON LLP
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`By: /s/ Trevor Maxim
`Larry W. McFarland
`Kollin J. Zimmermann
`Trevor Maxim
`YeWon Min
`Attorneys for Opposer Instagram, LLC
`Kilpatrick Townsend & Stockton LLP
`1801 Century Park East, Suite 2300
`Los Angeles, CA 90067
`Telephone: (310) 248-3830
`Facsimile:
`(310) 860-0363
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`73503945V.4 098106/0938153
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 25, 2020, I served the foregoing OPPOSER INSTAGRAM,
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`LLC’S REPLY IN SUPPORT OF MOTION FOR PARTIAL JUDGMENT ON THE
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`PLEADINGS, OR IN THE ALTERNATIVE, MOTION TO STRIKE APPLICANT’S
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`AFFIRMATIVE DEFENSES on the parties in said action via email to Christopher D. Olsyzk,
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`Jr. at: colszyk@foxrothschild.com, ipdocket@foxrothschild.com, mleonard@foxrothschild.com.
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`Dated: June 25, 2020
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`By:
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`/s/ Julie Contreras
` Julie Contreras
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`73503945V.4 098106/0938153
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