throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1098881
`12/01/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Instagram, LLC
`
`limited liability company
`
`Citizenship
`
`Delaware
`
`1601 WILLOW ROAD
`MENLO PARK, CA 94025
`UNITED STATES
`
`TREVOR MAXIM
`KILPATRICK TOWNSEND & STOCKTON LLP
`1801 CENTURY PARK EAST SUITE 2300
`LOS ANGELES, CA 90067
`UNITED STATES
`Primary Email: tmaxim@kilpatricktownsend.com
`Secondary Email(s): lmcfarland@kilpatricktownsend.com, kzimmer-
`mann@kilpatricktownsend.com, aalbertson@kilpatricktownsend.com, tmax-
`im@kilpatricktownsend.com, tmadmin@kilpatricktownsend.com, sjoachim-
`sthaler@kilpatricktownsend.com
`3102483830
`
`Docket Number
`
`1133483
`
`Applicant Information
`
`Application No.
`
`88923261
`
`Publication date
`
`12/01/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`12/01/2020
`
`Opposition Peri-
`od Ends
`
`12/31/2020
`
`Instagoods Pty Ltd
`LEVEL 25, 9 CASTLEREAGH STREET
`SYDNEY NEW SOUTH WALES, 2000
`AUSTRALIA
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Downloadable mobile applications for pur-
`chasing a wide variety of consumer goods and obtaining information on designers, influencers, shop-
`ping events and promotions
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: On-line retail store services featuringa wide
`variety of consumer goods of others; Retail store services featuring a wide variety of consumer goods
`of others
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`

`

`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4146057
`
`Registration Date
`
`05/22/2012
`
`Application Date
`
`09/19/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 009. First use: First Use: 2010/10/06 First Use In Commerce: 2010/10/06
`Downloadable computer software for modifying the appearance and enabling
`transmission of photographs
`
`U.S. Registration
`No.
`
`4756754
`
`Registration Date
`
`06/16/2015
`
`Application Date
`
`10/24/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 035. First use: First Use: 2013/08/00 First Use In Commerce: 2013/11/01
`Marketing, advertising and promotion services; dissemination of advertising
`forothers via computer and communication networks; marketing and advertising
`consultation services; promoting the goods and services of others via computer
`and communication networks; market research services; provision of market re-
`search information
`Class 038. First use: First Use: 2013/08/00 First Use In Commerce: 2013/11/01
`Telecommunication services, namely, transmission of advertisements and me-
`dia advertising communications via computer and communication networks
`
`U.S. Registration
`No.
`
`4795634
`
`Registration Date
`
`08/18/2015
`
`Application Date
`
`03/04/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`The mark consists of the word "INSTAGRAM" written in script writing.
`
`Class 009. First use: First Use: 2013/05/13 First Use In Commerce: 2013/05/13
`Downloadable computer software for modifying the appearance and enabling
`transmission of photographs; computer softwarefor the collection, editing, organ-
`izing, modifying, transmission, storage and sharing of data and information;
`computersoftware for use as an application programming interface (API); com-
`puter software in the nature of an application programming interface (API) for
`computer software which facilitates online services for social networking, build-
`ing social networking applications and for allowing data retrieval, upload, down-
`load, access and management; computer software to enable uploading, down-
`loading, accessing, posting, displaying, tagging, blogging, streaming, linking,
`
`

`

`sharing or otherwise providing electronic media or information via computer and
`communication networks
`Class 038. First use: First Use: 2013/05/13 First Use In Commerce: 2013/05/13
`Telecommunications services, namely, electronic transmission of data, mes-
`sages,graphics, images and information; peer-to-peer photo sharing services,
`namely, electronic transmission of digital photofiles among internet users;
`providing access to computer, electronic and onlinedatabases; providing online
`forums for communication, namely, transmission on topics of general interest;
`providing online chat rooms and electronic bulletin boards for transmission of
`messages amongusers in the field of general interest;broadcasting services over
`computer or other communication networks, namely, uploading, posting, display-
`ing, tagging, and electronically transmitting data, information, messages, graph-
`ics, and images; telecommunications services, namely, electronic transmission
`of photos and videos
`Class 041. First use: First Use: 2013/05/13 First Use In Commerce: 2013/05/13
`Providing computer, electronic and online databases in the field of entertain-
`ment; publication of electronic journals and web logs featuring user generated or
`specified content; publishing services, namely, publishing of electronic publica-
`tions for others
`Class 042. First use: First Use: 2013/05/13 First Use In Commerce: 2013/05/13
`Providing a web site that gives users the ability to upload photographs; com-
`puter services, namely, providing an interactive web site featuring technology
`thatallows users to manage their online photograph and social networking ac-
`counts; providing use of online temporary non-downloadable software for modi-
`fying the appearance and enabling transmission of photographs; file sharing ser-
`vices, namely, providing a web site featuring technology enabling users to up-
`load and download electronic files; hosting on-line web facilities for others for
`managing and sharing on-line content; providing information from searchable in-
`dexes and databases of information; providing search engines for obtaining data
`via communications networks; computer services, namely, creating virtual com-
`munities for registered users to participate in discussions and engage in social,
`business and community networking; computer services, namely, hosting online
`web facilities for others for organizing and conducting meetings, events and in-
`teractive discussions via communication networks; application service provider
`(ASP) services, namely,hosting computer software applications of others; applic-
`ation service provider (ASP) featuring software to enable or facilitate the upload-
`ing, downloading, streaming, posting, displaying, blogging, linking, sharing or
`otherwise providing electronic media or information over communication net-
`works; providing an online network service that enables users to transfer per-
`sonal identity data to and share personal identity data with and amongmultiple
`web sites; providing a web site featuring technology that enables online users to
`create personal profiles featuring social networking information andto transfer
`and share such information among multiple web sites; providing information on
`topics of general interest from searchable indexes and databases of information,
`including text, electronic documents, databases, graphics and audio visual in-
`formation, on computer and communication networks namely, provision of
`search engines for the Internet; providing temporary use of non-downloadable
`software applications for social networking, creating a virtual community, and
`transmission of audio, video, photographic images, text, graphics and data;
`computerservices in the nature of customized web pages featuring user-defined
`or user-specified information, personal profiles,audio, video, photographic im-
`ages, text, graphics and data
`Class 045. First use: First Use: 2013/05/13 First Use In Commerce: 2013/05/13
`Internet based social introduction, networking and dating services; providing on-
`line computer databases in the fields of social networking, social introductionand
`dating
`
`

`

`U.S. Registration
`No.
`
`4822600
`
`Registration Date
`
`09/29/2015
`
`Application Date
`
`06/20/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 009. First use: First Use: 2010/10/06 First Use In Commerce: 2010/10/06
`Downloadable computer software for modifying the appearance and enabling
`transmission of images, audio-visual and videocontent; computer software for
`the collection, editing, organizing, modifying, transmission, storage and sharing
`of data and information; computer software foruse as an application program-
`ming interface (API); computer software in the nature of an application program-
`ming interface (API) which facilitates online services for social networking, build-
`ing social networking applications and for allowing data retrieval, upload, down-
`load, access and management; computer software to enable uploading, down-
`loading, accessing, posting, displaying, tagging, blogging, streaming, linking,
`sharing or otherwise providing electronic media or information via computer and
`communication networks
`
`U.S. Registration
`No.
`
`4827509
`
`Registration Date
`
`10/06/2015
`
`Application Date
`
`06/20/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 045. First use: First Use: 2010/10/06 First Use In Commerce: 2010/10/06
`Internet based Social introduction, networking and dating services; providing in-
`formation in the form of databases featuring information in the fields of social
`networking, social introduction and dating
`
`U.S. Registration
`No.
`
`4856047
`
`Registration Date
`
`11/17/2015
`
`Application Date
`
`06/20/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 042. First use: First Use: 2010/10/06 First Use In Commerce: 2010/10/06
`Providing use of online temporary non-downloadable software for enabling
`transmission of images and audiovisual and video content; hosting on-line web
`facilities as websites and mobile sites for others for managing and sharing on-
`line content; providing information from searchable indexes and databases of in-
`formation;providing search engines for obtaining data via communications net-
`works; computer services, namely, creating virtual communities for registered
`users to participate in discussions and engage in social, business and com-
`munity networking; computer services, namely, hosting electronic facilities for
`others for organizingand conducting meetings, events and interactive discus-
`sions via communication networks; application service provider (ASP) services,
`
`

`

`namely, hosting computer software applications of others; application service
`provider (ASP) featuring software to enable or facilitate the uploading, down-
`loading, streaming, posting, displaying, blogging, linking, sharing or otherwise
`providing electronic media or information over communication net-
`works;providing an online network service that enables users to transfer person-
`al identity data to and share personal identity data with and among multiple web-
`sites;providing temporary use of non-downloadable software applications for so-
`cial networking, creating a virtual community, and transmission of audio, video,
`photographic images, text, graphics and data; computer services in the nature of
`customized web pages featuring user-defined or specified information in the
`nature ofpersonal profiles, audio, video, photographic images, text, graphics and
`data
`
`U.S. Registration
`No.
`
`4863594
`
`Registration Date
`
`12/01/2015
`
`Application Date
`
`06/20/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 041. First use: First Use: 2010/10/06 First Use In Commerce: 2010/10/06
`Providing computer, electronic and online databases in the field of entertain-
`ment; publication of electronic journals and web logs featuring user generated or
`specified content; publishing of electronic publications for others
`
`U.S. Registration
`No.
`
`4863595
`
`Registration Date
`
`12/01/2015
`
`Application Date
`
`06/20/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 038. First use: First Use: 2010/10/06 First Use In Commerce: 2010/10/06
`Telecommunications services, namely, electronic transmission of data, mes-
`sages,graphics, images, videos and information; peer-to-peer photo and video
`sharing services, namely, electronic transmission of digital photos, video and au-
`dio-visual files among internet users; providing access to computer, electronic
`and online databases; providing online forums for communication, namely,
`transmission on topics of general interest; providing online chat rooms and elec-
`tronic bulletin boards for transmission of messages among users in the field of
`general interest; broadcasting services over computer or other communication
`networks, namely,uploading, posting, displaying, tagging, and electronically
`transmitting data, information, messages, graphics, videos,and images
`
`U.S. Registration
`No.
`
`5019151
`
`Registration Date
`
`08/09/2016
`
`Word Mark
`
`Design Mark
`
`INSTAGRAM
`
`Application Date
`
`08/14/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`The mark consists of the word "INSTAGRAM" written in script writing.
`
`

`

`Mark
`
`Goods/Services
`
`Class 035. First use: First Use: 2013/08/00 First Use In Commerce: 2013/11/01
`Marketing, advertising and promotion services; Dissemination of advertising
`forothers via computer and communication networks; Promoting the goods and
`services of others via computer and communication networks; Marketing and
`advertising consultation services; Market research services; Provision of market
`research information; Providing online advertising services for others; Providing
`online advertising on computer networks
`
`U.S. Registration
`No.
`
`5566030
`
`Registration Date
`
`09/18/2018
`
`Application Date
`
`06/20/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 042. First use: First Use: 2012/11/05 First Use In Commerce: 2012/11/05
`Providing a web site that gives users the ability to upload images; file sharing
`services, namely, providing a website featuring technology enabling users to up-
`load electronic files; providing a web site featuring technology that enables on-
`line users to create personal profiles featuring social networking information
`
`U.S. Registration
`No.
`
`5869731
`
`Registration Date
`
`09/24/2019
`
`Application Date
`
`09/27/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`INSTAGRAM
`
`NONE
`
`Class 035. First use: First Use: 2019/03/19 First Use In Commerce: 2019/03/19
`Providing online facilities for connecting sellers with buyers; providing online
`marketplaces for sellers of goods and/or services; facilitating the exchange and
`sale of services and products of third parties via computer and communication-
`networks; business and advertising services, namely, managing, tracking, ana-
`lyzing, reporting, measuring and optimizingelectronic payment transaction data
`forothers; marketing, advertising and promotion services, namely, providing in-
`formation regarding discounts, coupons, rebates, vouchers, links to retail web-
`sites of others, and special offers for the goods and services of others
`Class 036. First use: First Use: 2019/03/19 First Use In Commerce: 2019/03/19
`Financial transaction processing services, namely, providing secure commercial
`transactions and payment options; Electronic processing and transmission of
`billpayment data for users of the internet and communication networks; Electron-
`ic funds transfer services; Electronic credit card, debit card, and gift card trans-
`action processing services; Merchant services, namely, payment transaction
`processing services; Payment processing services; Providing electronic mobile
`payment services for others
`
`Attachments
`
`Notice of Opposition against INSTAGOODS_US App. No. 88923261 Cls 9 3
`5.pdf(73305 bytes )
`Exhibit A - NOO re INSTAGOODS.pdf(4147612 bytes )
`
`

`

`Signature
`
`Name
`
`Date
`
`/Trevor Maxim/
`
`Trevor Maxim
`
`12/01/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No.: 098106-1133483
`
`In re Application No. 88/923,261
`Filed: May 19, 2020
`Published: December 1, 2020, in the Official Gazette
`For:
`INSTAGOODS
`
`INSTAGRAM, LLC,
`
`Opposition No. _____________
`
`Opposer,
`
`NOTICE OF OPPOSITION
`
`vs.
`
`
`
`INSTAGOODS PTY LTD,
`
`Applicant.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Dear Sir or Madam:
`
`1.
`
`Instagram, LLC (“Opposer” or “Instagram”) believes it will be damaged by the
`
`registration of the mark INSTAGOODS (“Applicant’s Mark”) covered by Application Serial No.
`
`88/923,261 (the “Application”), which was filed on May 19, 2020, by Instagoods Pty Ltd
`
`(“Applicant”), and hereby opposes such registration. This Notice of Opposition has been timely filed.
`
`As grounds for its Opposition, Opposer alleges as follows:
`
`2.
`
`Instagram is a Delaware limited liability company with its headquarters and principal
`
`place of business at 1601 Willow Road, Menlo Park, California 94025, United States of America.
`
`3.
`
`Applicant is, upon information and belief, an Australian proprietary limited company
`
`with an address at Level 25, 9 Castlereagh Street, Sydney, New South Wales 2000, Australia.
`
`

`

`4.
`
`Regarding the Application, as published in the Official Gazette dated December 1,
`
`2020, Applicant seeks to register the mark INSTAGOODS in International Class 9 for “Downloadable
`
`mobile applications for purchasing a wide variety of consumer goods and obtaining information on
`
`designers, influencers, shopping events and promotions,” and in International Class 35 for “On-line
`
`retail store services featuring a wide variety of consumer goods of others; Retail store services
`
`featuring a wide variety of consumer goods of others.”
`
`5.
`
`Since the launch of its photo sharing and social networking service and software
`
`application in October 2010, Instagram has continuously used the trademark INSTAGRAM in
`
`interstate commerce in the United States in connection with its goods and services. Reflecting its
`
`trademark rights, Instagram owns U.S. registrations and applications for its INSTAGRAM mark,
`
`including the following:
`
`Trademark
`
`Reg. No.
`
`Reg. Date
`
`First Use Date
`
`INSTAGRAM
`
`4146057
`
`INSTAGRAM
`
`4756754
`
`INSTAGRAM
`(stylized)
`INSTAGRAM
`
`4795634
`
`4822600
`
`INSTAGRAM
`
`4827509
`
`5/22/2012
`
`6/16/2015
`
`10/6/2010
`
`11/1/2013
`
`8/18/2015
`
`5/13/2013
`
`9/29/2015
`
`10/6/2015
`
`10/6/2010
`
`10/6/2010
`
`INSTAGRAM
`
`4856047
`
`11/17/2015
`
`10/6/2010
`
`INSTAGRAM
`
`4863594
`
`INSTAGRAM
`
`4863595
`
`INSTAGRAM
`(stylized)
`
`5019151
`
`INSTAGRAM
`
`5566030
`
`INSTAGRAM
`
`5869731
`
`12/1/2015
`
`12/1/2015
`
`8/9/2016
`
`9/18/2018
`
`9/24/2019
`
`10/6/2010
`
`10/6/2010
`
`11/1/2013
`
`11/5/2012
`
`3/19/2019
`
`These registrations and applications cover a variety of goods and services, including but not limited to
`
`the following:
`
` Shopping and payment services, including providing online facilities for connecting sellers
`with buyers and providing online marketplaces;
`
`2
`
`

`

` Providing use of online temporary non-downloadable software for enabling transmission of
`images and audiovisual and video content;
`
` Providing temporary use of non-downloadable software applications for social networking,
`creating a virtual community, and transmission of audio, video, photographic images, text,
`graphics and data;
`
` Downloadable and non-downloadable computer software for modifying the appearance and
`enabling transmission of images, audio-visual and video content;
`
` Computer software for the collection, editing, organizing, modifying, transmission, storage and
`sharing of data and information;
`
` Providing computer, electronic and online databases in the field of entertainment;
`
` Marketing, advertising and promotion services;
`
` Telecommunications services, namely electronic transmission of data, messages, graphics,
`images, videos and information;
`
` Computer services, namely providing an interactive website featuring technology that allows
`users to manage their online photograph and social networking accounts; and
`
` Social introduction, networking and dating services.
`
`All of Instagram’s marks featuring the term INSTAGRAM are referred to herein as the
`
`“INSTAGRAM Mark.” Attached as Exhibit A are certificates of registration and current TSDR
`
`records for U.S. registrations of the INSTAGRAM Mark.
`
`6.
`
`The INSTAGRAM Mark is highly distinctive with regard to all of Instagram’s goods
`
`and services in connection with which the mark is used.
`
`7.
`
`Instagram’s INSTAGRAM Mark has priority over Applicant’s Application, which was
`
`filed on May 19, 2020, on a Section 1(b) “intent to use” filing basis.
`
`8.
`
`Applicant’s INSTAGOODS Mark creates a similar commercial impression as the
`
`INSTAGRAM Mark does.
`
`9.
`
`Applicant’s goods and services claimed in its Application are related to the goods and
`
`services offered by Instagram in connection with its INSTAGRAM Mark.
`
`3
`
`

`

`10.
`
`Applicant’s Mark is deceptively similar to the INSTAGRAM Mark so as to cause
`
`confusion, or to cause mistake or to deceive the public as to the origin of Applicant’s goods and
`
`services offered under Applicant’s Mark. Specifically, registration of Applicant’s Mark will lead the
`
`public to conclude, incorrectly, that Applicant is or has been affiliated or connected with Instagram,
`
`and/or that Applicant’s goods and services provided under Applicant’s Mark are, or have been,
`
`authorized, sponsored, endorsed, or licensed by Instagram. Issuance of any registration to Applicant
`
`for the proposed mark will result in damage to Instagram and the public. Therefore, registration of
`
`Applicant’s Mark is prohibited by 15 U.S.C. §1052(d).
`
`11. Moreover, through Instagram’s widespread use of the INSTAGRAM Mark, extensive
`
`and continuous media coverage, the high degree of consumer recognition of the INSTAGRAM Mark,
`
`Instagram’s enormous and loyal user base, its multiple trademark registrations and pending
`
`applications, and other factors, the INSTAGRAM Mark is strong, enjoys widespread recognition
`
`among consumers, and has become famous within the meaning of Section 43(a) of the United States
`
`Trademark Act, 15 U.S.C. § 1125(c).
`
`12.
`
`The INSTAGRAM Mark was famous before Applicant filed the Application at issue
`
`and before Applicant began using Applicant’s Mark.
`
`13.
`
`Applicant’s Mark has caused or is likely to cause dilution of the distinctive quality of
`
`the INSTAGRAM Mark and/or harm the reputation of the INSTAGRAM Mark in violation of 15
`
`U.S.C. § 1125(c), to the harm and damage of Instagram and the public.
`
`14.
`
`Therefore, registration of Applicant’s Mark should be refused under 15 U.S.C. §§ 1052
`
`and 1063(a).
`
`15.
`
`Registration of Applicant’s Mark would constitute prima facie evidence of the validity
`
`of such registration, Applicant’s ownership of Applicant’s Mark, and Applicant’s exclusive right to use
`
`the INSTAGOODS mark pursuant to the provisions of 15 U.S.C. § 1057(b). Such registration would
`
`4
`
`

`

`be a source of damage and injury to Instagram and the public, and would be contrary to the principles
`
`of registration set out in 15 U.S.C. §§ 1051 et seq.
`
`WHEREFORE, Instagram prays that this Opposition be sustained, and that registration to
`
`Applicant for the mark covered by Application Serial No. 88/923,261 be refused.
`
`Please direct all notices, pleadings and process regarding this matter to the below.
`
` Respectfully submitted,
`
` KILPATRICK TOWNSEND & STOCKTON LLP
`
`Dated: December 1, 2020
`
`By:
`Larry W. McFarland
`Kollin Zimmermann
`Annie Albertson
`Trevor C. Maxim
`lmcfarland@kilpatricktownsend.com;
`kzimmermann@kilpatricktownsend.com;
`aalbertson@kilpatricktownsend.com;
`tmaxim@kilpatricktownsend.com
`
`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
`
`5
`
`

`

`Exhibit A
`
`Notice of Opposition re INSTAGOODS
`SN 88/923,261
`
`

`

`INS TAGRAM
`
`INSTAGRAM. INC. (DELAWARE CORPORATION)
`Reg. No. 4,146,057
`181 SOUTH PARK AVENUE
`_
`Registered May 22, 2012 SAN FRANCISCO. CA 94107
`
`Int. CL: 9
`
`TRADEIVIARK
`
`PRINCIPAL REGISTER
`
`FOR: DOWNLOADABLE COMPUTER SOFTWARE FOR MODIFYING THE APPEARANCE
`AND ENABLING TRANSMISSION OF PHOTOGRAPHS, IN CLASS 9 (US. CLS. 21, 23, 26,
`36 AND 38).
`
`FIRST USE 10-6-2010; IN COMMERCE 10-6-2010.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`THE WORDING "INSTAGRAM" HAS NO MEANING IN A FOREIGN LANGUAGE.
`
`SER. NO. 85—426,267, FILED 9—19—2011.
`
`BILL DAWE. EXAMINING ATTORNEY
`
`
`
`Director 0me Unized States Patent and Trademark Office
`
`

`

`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADElVIARK REGISTRATION
`
`DOCUlVIENTS BELOW DURING THE SPECIFIED TIlVIE PERIODS.
`
`WARNIN G: YOUR REGISTRATION WILL BE CAN CELLED IF YOU DO 1V OT FILE THE
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date, See 15 U.S.C, §§1058, 1141k_ If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court,
`
`Second Filing Deadline.- You must file a Declaration of Use (or Exeusable Nonuse) and an
`Application for Renewal between the 9th and IOth years after the registration date.*
`See 15 U_S.C. §1059,
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`You must file a Declaration oste (or Exeusable Nonuse) and an Application for Renewal between
`every 9th and 10th—year period, calculated from the registration date.*
`
`Grace Period Filings"
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonusc) referenced above directly with the USPTO, The time periods for filing are
`based on the US. registration date (not the international registration date). The deadlines and grace periods
`for the Declarations of Use (or Excusable Nonusc) are identical to those for nationally issued registrations
`See 15 U.S.C. §§1058, 1141k. However, owners of intemational registrations do not file renewal applications
`at the USPTO. lnstead, the holder must file a renewal of the underlying international registration at the
`International Bureau of the World Intellectual Propelty Organization, under A 1ticle 7 of the Madrid Protocol,
`before the expiration of each ten-year term of protection, calculated from the date of the international
`registration, See 15 U.S.C. §1141j. For more information and renewal forms for the international registration,
`see http://www.wipoint/madrid/en/L
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions ol'protection, you can file the registration maintenance documents referenced above online
`at http://www.usptogov.
`
`Page: 2 / RN # 4,146,057
`
`

`

`Generated on: This page was generated by TSDR on 2020-11-06 14:03:45 EST
`
`Mark:
`
`INSTAGRAM
`
`US Serial Number: 85426267
`
`US Registration
`Number:
`
`4146057
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Sep. 19, 2011
`
`Registration Date: May 22, 2012
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`
`Status Date: May 24, 2018
`
`Publication Date: Mar. 06, 2012
`

`
`Mark Literal
`Elements:
`
`INSTAGRAM
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Translation: The wording "INSTAGRAM" has no meaning in a foreign language.
`
`Related Properties Information
`
`1129314
`
`International
`Registration
`Number:
`
`A0028862/1129314
`
`International
`Application(s)
`/Registration(s)
`Based on this
`Property:
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Downloadable computer software for modifying the appearance and enabling transmission of photographs
`
`International
`Class(es):
`
`009 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`First Use: Oct. 06, 2010
`
`Use in Commerce: Oct. 06, 2010
`
`Basis Information (Case Level)
`
`

`

`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: INSTAGRAM, LLC
`
`Owner Address: 1601 WILLOW ROAD
`MENLO PARK, CALIFORNIA UNITED STATES 94025
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Anthony J. Malutta
`
`Docket Number: 0936966
`
`Attorney Primary
`Email Address:
`
`amalutta@kilpatricktownsend.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Attorney of Record
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Anthony J. Malutta
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 Peachtree Street, Suite 2800
`Mailstop: IP Docketing - 22
`Atlanta, GEORGIA UNITED STATES 30309
`
`Phone:
`
`(415) 576-0200
`
`Fax:
`
`(415) 576-0300
`
`Correspondent e-
`mail:
`
`amalutta@kilpatricktownsend.com tmadmin@kilp
`atricktownsend.com kkappes@kilpatricktownsend.
`com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`May 24, 2018
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`
`May 24, 2018
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`May 23, 2018
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`May 10, 2018
`
`TEAS SECTION 8 & 15 RECEIVED
`
`May 22, 2017
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`Nov. 02, 2016
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jun. 08, 2016
`
`NOTICE OF SUIT
`
`Jun. 08, 2016
`
`NOTICE OF SUIT
`
`Sep. 18, 2015
`
`COUNTERCLAIM OPP. NO. 999999
`
`Mar. 25, 2015
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Mar. 25, 2015
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Sep. 22, 2014
`
`COUNTERCLAIM OPP. NO. 999999
`
`Jul. 10, 2013
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Dec. 20, 2012
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Dec. 20, 2012
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Nov. 21, 2012
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Oct. 24, 2012
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`May 22, 2012
`
`REGISTERED-PRINCIPAL REGISTER
`
`Mar. 06, 2012
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Mar. 06, 2012
`
`PUBLISHED FOR OPPOSITION
`
`Feb. 15, 2012
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Proceeding
`Number
`
`69615
`
`69615
`
`223106
`
`217238
`
`

`

`Feb. 08, 2012
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`Feb. 03, 2012
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Feb. 03, 2012
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Jan. 31, 2012
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Jan. 30, 2012
`
`ASSIGNED TO LIE
`
`Jan. 12, 2012
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jan. 12, 2012
`
`EXAMINER'S AMENDMENT ENTERED
`
`Jan. 12, 2012
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Jan. 12, 2012
`
`EXAMINERS AMENDMENT E-MAILED
`
`Jan. 12, 2012
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Jan. 05, 201

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