Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1127093
`04/14/2021
`
`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
`Granted to Date
`of previous ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Instagram, LLC
`04/14/2021
`
`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): ymin@kilpatricktownsend.com, aal-
`bertson@kilpatricktownsend.com, sjoachimsthaler@kilpatricktownsend.com,
`lmcfarland@kilpatricktownsend.com, tmadmin@kilpatricktownsend.com, kzim-
`mermann@kilpatricktownsend.com
`3102483830
`
`Docket Number
`
`1209238
`
`Applicant Information
`
`90045650
`04/14/2021
`
`Application No.
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition Peri-
`od Ends
`Zibo Youjia Network Technology Co., Ltd.
`RM.316,BUILDING 2,SHIJIXINSHIJIE SQUARE,
`NO.77, LIUQUAN RD., ZHANGDIAN DIST.,
`ZIBO, SHANDONG, 255022
`CHINA
`Goods/Services Affected by Opposition
`
`12/15/2020
`04/14/2021
`
`Class 009. First Use: 2019/09/10 First Use In Commerce: 2019/09/10
`All goods and services in the class are opposed, namely: Downloadable computer software for tak-
`ing, editing, and sharing photos and videos; Downloadable mobile applications fortak-
`ing, editing, and sharing photos and videos; Recorded computer software for taking, editing,
`and sharing photos and videos
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`

`

`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`5198379
`
`05/09/2017
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`05/11/2016
`
`Foreign Priority
`Date
`
`11/25/2015
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a rounded square wherein the bottom left corner is yel-
`low,fading to orange and the bottom right corner is red and pink. The top of the
`square is blue and purple, fading to pink.There is another rounded square su-
`perimposed upon the larger square in white containing a white circle and anoth-
`er smaller white circle above and to the right of the larger circle.
`Class 035. First use: First Use: 2016/05/11 First Use In Commerce: 2016/05/11
`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; Online advertisements
`
`U.S. Registration
`No.
`Registration Date
`
`5198386
`
`05/09/2017
`
`Word Mark
`
`NONE
`
`Application Date
`
`05/13/2016
`
`Foreign Priority
`Date
`
`11/25/2015
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a rounded square wherein the bottom left corner is yel-
`low,fading to orange and the bottom right corner is red and pink. The top of the
`square is blue and purple, fading to pink.There is another rounded square su-
`perimposed upon the larger square in white containing a white circle and anoth-
`er smaller white circle above and to the right of the larger circle.
`Class 041. First use: First Use: 2016/05/11 First Use In Commerce: 2016/05/11
`Providing computer, electronic and online databases featuring entertainment in-
`formation; Publication of electronic journals and blogs featuring user generated
`or specified content; Publishing services, namely, publishing of electronic public-
`ations for others
`
`U.S. Registration
`No.
`Registration Date
`
`5299116
`
`10/03/2017
`
`Word Mark
`
`NONE
`
`Application Date
`
`05/11/2016
`
`Foreign Priority
`Date
`
`11/25/2015
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a rounded square wherein the bottom left corner is yel-
`low,fading to orange and the bottom right corner is red and pink. The top of the
`square is blue and purple, fading to pink.There is another rounded square su-
`perimposed upon the larger square in white containing a white circle and anoth-
`er smaller white circle above and to the right of the larger circle.
`Class 009. First use: First Use: 2016/05/11 First Use In Commerce: 2016/05/11
`Downloadable computer software for modifying and enabling transmission of im-
`ages, audio-visual and video content; Downloadable computer software for
`viewing and interacting with a feed of images, audio-visual and video content
`and associated text and data; Downloadable computer software for finding con-
`tent and contentpublishers, and for subscribing to content; Computer software
`for tagging images, audio-visual and video content with data indicating date, loc-
`ation, people and subject matter; Computer search enginesoftware; Computer
`software for social networking; Computer software for creating, managing, and
`interacting with an online community; Computer software for managing social
`networking content, interacting with a virtual community, and transmission of im-
`ages, audio-visual and video content, photographs, videos, data, text, mes-
`sages, comments, advertisements,media advertising communications and in-
`formation; Computer software for creating, editing, uploading, downloading, ac-
`cessing, viewing, posting, displaying, tagging, blogging, streaming, linking, an-
`notating, indicating sentiment about, commenting on, embedding, transmitting,
`sharing, searching, or otherwise providing or interacting with electronic media;
`Computer software for sending electronic message alerts, notifications and re-
`minders; Software for sending and receiving electronic messages; Computer
`software fordisseminating advertising for others; Computer software for use as
`an application programming interface (API); Computersoftware in the nature of
`application programming interfaces (APIs) which facilitate online services for so-
`cial networking, developing software applications, and purchasing and dissemin-
`ating advertising
`
`U.S. Registration
`No.
`Registration Date
`
`5299118
`
`10/03/2017
`
`Word Mark
`
`NONE
`
`Application Date
`
`05/11/2016
`
`Foreign Priority
`Date
`
`11/25/2015
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a rounded square wherein the bottom left corner is yel-
`low,fading to orange and the bottom right corner is red and pink. The top of the
`square is blue and purple, fading to pink.There is another rounded square su-
`perimposed upon the larger square in white containing a white circle and anoth-
`er smaller white circle above and to the right of the larger circle.
`Class 038. First use: First Use: 2016/05/11 First Use In Commerce: 2016/05/11
`Photo sharing and video sharing services, namely, electronic transmission of di-
`gital photo files, videos and audio visual content among internet users; telecom-
`munications services, namely, electronictransmission of images, audio-visual
`and video content, photographs, videos, data, text, messages, advertisements,
`media advertising communications and information; Peer-to-peer network com-
`puter services, namely, electronic transmission ofimages, audio-visual and video
`content,photographs, videos, data, text, messages, advertisements, media ad-
`vertising communications and information; Providing access to computer, elec-
`tronic and online databases; Providing online forums forcommunication, namely,
`transmission on topics of general interest; Providing email and instant mes-
`saging services; Chatroom services for social networking; Providing online com-
`munications links whichtransfer web site users to other local and global web
`pages
`
`U.S. Registration
`No.
`Registration Date
`
`5299119
`
`10/03/2017
`
`Word Mark
`
`NONE
`
`Application Date
`
`05/11/2016
`
`Foreign Priority
`Date
`
`11/25/2015
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a rounded square wherein the bottom left corner is yel-
`low,fading to orange and the bottom right corner is red and pink. The top of the
`square is blue and purple, fading to pink.There is another rounded square su-
`perimposed upon the larger square in white containing a white circle and anoth-
`er smaller white circle above and to the right of the larger circle.
`Class 042. First use: First Use: 2016/05/11 First Use In Commerce: 2016/05/11
`Design and development of computer software; Providing a website that gives
`users the ability to engage in social networking and manage their social net-
`workingcontent; Providing temporary use of non-downloadable software for so-
`cial networking, managing social networking content, creating a virtual com-
`munity, and transmission of images, audio-visual and video content, photo-
`graphs, videos, data, text, messages, advertisements, media advertising com-
`munications and information;Providing temporary use of non-downloadable soft-
`ware for modifying and enablingtransmission of images, audio-visual and video
`content; Providing temporary useof non-downloadable computer software for
`viewing and interacting with a feed of images, audio-visual and video contentand
`associated text and data; Providingtemporary use of non-downloadable com-
`puter software for finding content and content publishers, and for subscribing to
`content; Providing temporary use of non-downloadable computer software for
`tagging images, audio-visual and video content with data indicating date, loca-
`tion, people and subject matter; Providing information from searchable indexes
`and databases of information; Providing search engines for obtaining data via
`communications networks; Providing an online network service that enables
`users to transfer personal identity data and to share personal identity data with
`and among multiple applications or websites; Computer services, namely, host-
`ing online web facilities for others for organizing and conducting meetings,
`events and interactive discussions via communication networks; Computer ser-
`vices, namely, creating a virtual community for registered users to share, view,
`subscribe to and interactwith images, audio-visual and video content and related
`data and information; Application service provider (ASP) services, namely, host-
`ing computer software applications of others; Application service provider (ASP)
`featuring software for social networking, managing social networking content,
`creating a virtual community, and transmission of images, audio-visual and
`video content, photographs, videos, data, text, messages, advertisements, me-
`dia advertising communications andinformation; Application service provider
`(ASP) featuring software to enable creating, editing, uploading, download-
`
`

`

`ing,accessing, viewing, posting, displaying, tagging, blogging, streaming, link-
`ing,annotating, indicating sentiment about,commenting on, embedding, transmit-
`ting,sharing, searching, or otherwise providing or interacting with electronic me-
`dia; Application service provider (ASP) featuring application programming inter-
`face(API) software which facilitates onlineservices for social networking, devel-
`oping software applications, and purchasing and disseminating advertising; Ap-
`plication service provider (ASP) featuring software for use in buying, selling,
`tracking, valuing, optimizing, targeting, analyzing, delivery, and reporting of on-
`line advertising and marketing; Applicationservice provider (ASP) featuring soft-
`ware for use in designing and managing online advertising and marketing cam-
`paigns;Platform as a service (PAAS) featuring computer software platforms for
`social networking, managing social networking content, creating a virtual com-
`munity, andtransmission of images, audio-visual and video content, photo-
`graphs, videos, data, text, messages, advertisements, media advertising com-
`munications and information; Rental of computer software that gives users the
`ability to upload, edit, and share images, videos and audio-visual content
`
`U.S. Registration
`No.
`Registration Date
`
`5299120
`
`10/03/2017
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`05/11/2016
`
`Foreign Priority
`Date
`
`11/25/2015
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a rounded square wherein the bottom left corner is yel-
`low,fading to orange and the bottom right corner is red and pink. The top of the
`square is blue and purple, fading to pink.There is another rounded square su-
`perimposed upon the larger square in white containing a white circle and anoth-
`er smaller white circle above and to the right of the larger circle.
`Class 045. First use: First Use: 2016/05/11 First Use In Commerce: 2016/05/11
`Online social networking services; Internet based social introduction, networking
`and dating services; Providing information in the form of databases featuringin-
`formation in the fields of social networking, social introduction and dating
`
`U.S. Registration
`No.
`
`6104619
`
`Application Date
`
`07/17/2018
`
`

`

`Registration Date
`
`07/21/2020
`
`Word Mark
`Design Mark
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`The mark consists of solely of the gradient of color as used on a software iconin
`which the bottom left corner is yellow, fading to orange and the bottom right
`corner is red and pink. The top of thegradient is blue and purple, fading to pink.
`The elements represented in the dotted lines, namely, a rounded square super-
`imposed upon a larger square containing a circle and another smaller circle
`above and to the right of the larger circle, are not claimed as part of the mark.
`Class 009. First use: First Use: 2016/05/11 First Use In Commerce: 2016/05/11
`Software for creating and managing social media profiles and user accounts;
`Computer software for social networking andinteracting with online communities;
`Computer software for modifying photographs, images and audio, video, and au-
`dio-visual content with photographic filters and augmented reality (AR) effects,
`namely, graphics, animations, text, drawings;Computer software for modifying
`and enabling transmission of images, audio, audio visual and video content and
`data; messaging software; downloadable computer software for viewing and in-
`teracting with a feed of images, audio, audio-visual and video content and asso-
`ciated text and data
`
`87033951#TMSN.png( bytes )
`87035927#TMSN.png( bytes )
`87033826#TMSN.png( bytes )
`87033952#TMSN.png( bytes )
`87033954#TMSN.png( bytes )
`87033956#TMSN.png( bytes )
`88041692#TMSN.png( bytes )
`NOO re Rounded Square Gradient Design_US App 90045650.pdf(670524 bytes
`
`)E
`
`xhibit A - NOO re Rounded Square Gradient Design.pdf(628932 bytes )
`Exhibit B - NOO re Rounded Square Gradient Design.pdf(2824259 bytes )
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`Signature
`
`/Trevor Maxim/
`
`

`

`Name
`Date
`
`TREVOR MAXIM
`04/14/2021
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application No. 90/045,650
`Filed: July 10, 2020
`Published: Dec. 15, 2020 in the Official Gazette
`
`
`For:
`
`
` (Rounded Square Gradient Design)
`
`Opposition No. _____________
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`vs.
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`Applicant.
`
`
`
`
`
`
`
`INSTAGRAM, LLC,
`
`
`
`
`ZIBO YOUJIA NETWORK TECHNOLOGY
`CO., LTD.,
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Dear Sir or Madam:
`
`Instagram, LLC (“Opposer” or “Instagram”) believes it will be damaged by the registration of
`
`the mark
`
` (“Rounded Square Gradient Design”) covered by Application Serial No.
`
`90045650 filed on July 10, 2020, by Zibo Youjia Network Technology Co., Ltd. (“Applicant”), and
`
`hereby opposes such registration.
`
`1.
`
`Instagram is a Delaware limited liability company with its headquarters and principal
`
`place of business at 1601 Willow Road, Menlo Park, California 94025.
`
`
`
`
`

`

`
`
`2.
`
`Applicant is, upon information and belief, a Chinese limited company with its principal
`
`place of business located at Rm. 316, Building 2, Shijixinshijie Square, No.77, Liuquan Rd.,
`
`Zhangdian Dist., Zibo, Shandong CHINA 255022.
`
`3.
`
`This Notice of Opposition has been timely filed. As grounds of opposition, Instagram
`
`alleges as follows.
`
`4.
`
`As published in the Official Gazette dated December 15, 2020, Applicant seeks to
`
`register the mark
`
` (“Rounded Square Gradient Design”) in International Class 9 for
`
`“Downloadable computer software for taking, editing, and sharing photos and videos; Downloadable
`
`mobile applications for taking, editing, and sharing photos and videos; Recorded computer software
`
`for taking, editing, and sharing photos and videos.”
`
`(“Applicant’s Mark”).
`
`5.
`
`Instagram is the owner of Instagram, the world-famous photo/video sharing and editing
`
`service, software application, and social network launched in October 2010. Instagram owns exclusive
`
`rights to, among others, INSTAGRAM,
`
` (INSTAGRAM (Stylized));
`
`
`
`(“Spectrum Multi-Color Gradient Mark”)
`
` (“the Multi-Color Camera App Icon”), and
`
` (“Multi-Color Camera Logo Glyph”),
`
` (“Layout Icon”), including rights secured
`
`through various common law uses and trade mark registrations in the United States and internationally.
`
`
`
`
`2
`
`

`

`
`
`6.
`
`Since May 2016, Instagram has continually used its
`
` (“Multi-Color Camera
`
`App Icon”) and
`
` (“Spectrum Multi-Color Gradient Mark”) in interstate commerce in the
`
`United States in connection with its goods and services (
`
` collectively, the “Instagram
`
`Spectrum Gradient Marks”). Reflecting its trademark rights, Instagram owns U.S. registrations and
`
`applications for its Instagram Spectrum Gradient marks, including the following:
`
`Trademark
`
`Reg. No.
`
`Reg. Date
`
`First Use Date
`
`5198379
`
`5/9/2017
`
`5/11/2016
`
`5198386
`
`5/9/2017
`
`5/11/2016
`
`5299116
`
`10/3/2017
`
`5/11/2016
`
`5299118
`
`10/3/2017
`
`5/11/2016
`
`5299119
`
`10/3/2017
`
`5/11/2016
`
`5299120
`
`10/3/2017
`
`5/11/2016
`
`6104619
`
`7/21/20
`
`5/11/2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`These registrations cover a variety of goods and services, including but not limited to the following:
`
` Software for creating, editing, and sharing photos and videos;
`3
`
`
`
`
`

`

`
`
` Software for modifying and enabling transmission of images and audiovisual 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 featuring entertainment; Providing
`
`information from searchable indexes and databases of information;
`
` Marketing, advertising and promotion services; Market research services and provision of
`market research information; Providing online advertising services for others;
`
` Providing online databases and publishing electronic publications for others;
`
` Telecommunications services, namely electronic transmission of images, audio-visual and
`video content, photographs, videos, data, text, messages, advertisements, media advertising
`communications and information;
`
` Software for managing social networking profiles and accounts; and
`
` Social introduction, networking and dating services
`
`Attached as Exhibit A are certificates of registration and current TSDR records for U.S. registrations
`
`of the Instagram Spectrum Gradient Marks.
`
`7.
`
`The Instagram Spectrum Gradient Marks are highly distinctive with regard to all of
`
`Instagram’s goods and services in connection with which the marks are used.
`
`8.
`
`The Instagram Spectrum Gradient Marks have priority over Applicant’s Application,
`
`which claims a first use in commerce date of September 10, 2019.
`
`9.
`
`Applicant’s Mark creates a similar commercial impression as the Instagram Spectrum
`
`Gradient Marks.
`
`10.
`
`Applicant’s goods claimed in its Application are offered by Instagram in connection
`
`with the Instagram Spectrum Gradient Marks.
`
`11.
`
`Further to Applicant’s specimen of use submitted to the USPTO for Application Serial
`
`No. 90/045,650 available at
`
`https://tsdr.uspto.gov/documentviewer?caseId=sn90045650&docId=SPE20201110202405#docIndex=
`
`
`
`
`4
`
`

`

`
`
`5&page=1 as shown below, Applicant has been using its
`
` (Rounded Square Gradient Design)
`
`mark in connection with a mobile app for editing photos and videos for sharing on social media
`
`platforms as shown below, using the developer name Square Quick & Pic Collage Maker. The mobile
`
`app is available on the Google Play store at
`
`https://play.google.com/store/apps/details?id=videoeditor.videomaker.slideshow.fotoplay&hl=None
`
`The specimen shows Applicant’s use of the Rounded Square Gradient Design for a mobile app for
`
`creating, editing, and sharing photo/videos to “help you edit and share your photo music video on…
`
`Instagram with others”.
`
`
`
`
`
`
`5
`
`

`

`
`
`12.
`
`Upon information and belief, in addition to
`
`, Applicant has also used multiple
`
`other gradient design marks such as
`
` for mobile apps under the same
`
`developer name “Square Quick & Pic Collage Maker” on Google Play and other app marketplaces.
`Screenshots and app download locations of some of these uses are below and listed in Exhibit B.
`
`
`
`https://play.google.com/store/apps/details?id=videoeditor.videomaker.slideshow.fotoplay&hl=None
`
`https://play.google.com/store/apps/details?id=mobi.charmer.quicksquarenew&hl=en_US&gl=US
`
`
`
`
`
`
`6
`
`

`

`
`https://web.archive.org/web/20190529183047/https://play.google.com/store/apps/details?id=image.do
`
`wnload.repost.imagedownloaderforinstagram
`
`https://m.apkpure.com/download-repost-for-instagram-image-
`downloader/image.download.repost.imagedownloaderforinstagram
`
`13.
`
`Applicant has deliberately adopted these
`
`
`
` gradient
`
`design marks for use in connection with mobile apps for photo/video editing and sharing to mimic the
`
` Instagram Spectrum Gradient Marks. In fact, Applicant’s gradient design marks are
`
`specifically marketed for use for/with Instagram, with statements such as:
`
`
`
`
`
`
`
`
`
` “post your size photos and collage to Instagram quickly or resize photos to fit
`
`Instagram”
`
` “Repost Instagram & Video Downloader” “…helps you download or repost
`
`your favorite videos and photos from Instagram & IGTV. “Download or re-download
`
`photos on Instagram IGTV Post”
`
` “Download & Repost for Instagram - Image Downloader” “Image Downloader
`
`will help you download or repost your favorite videos and pictures from Instagram &
`
`IGTV.”
`
` “help you edit and share your photo music video on… Instagram with others”
`
`14.
`
`Applicant’s
`
` Mark is deceptively similar to the Instagram Spectrum Gradient
`
`Marks so as to cause confusion, or to cause mistake or to deceive the public as to the origin of
`7
`
`
`
`
`

`

`
`Applicant’s 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 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).
`
`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
`
` (Rounded Square Gradient Design) mark pursuant to the provisions of 15 U.S.C. § 1057(b).
`
`Such registration would 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. 90045650 be refused.
`
`Please direct all notices, pleadings, and process regarding this matter to the below.
`
`
`
`
`
`Dated: April 14, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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` Respectfully submitted,
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`KILPATRICK TOWNSEND & STOCKTON LLP
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`By: /Trevor Maxim/
`Larry W. McFarland
`Kollin J. Zimmermann
`YeWon Min
`Trevor Maxim
`Attorneys for Opposer Instagram, LLC
`Kilpatrick Townsend & Stockton LLP
`1801 Century Park East, Suite 2300
`Los Angeles, CA 90067
`Telephone:
`(310) 248-3830
`
`
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`8
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`

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`Exhibit A
`
`Notice of Opposition re (Rounded Square Gradient Design)
`SN 90/045,650
`
`

`

`Reg. No. 5,198,379
`
`Registered May 09, 2017
`
`Instagram, LLC (DELAWARE LIMITED LIABILITY COMPANY)
`1601 Willow Road
`Menlo Park, CA 94025
`
`Int. Cl.: 35
`
`Service Mark
`
`Principal Register
`
`CLASS 35: Marketing, advertising and promotion services; Dissemination of advertising for
`others 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; Online
`advertisements
`
`FIRST USE 5-11-2016; IN COMMERCE 5-11-2016
`
`The color(s) yellow, white, orange, pink, purple, red and blue is/are claimed as a feature of
`the mark.
`
`The mark consists of a rounded square wherein the bottom left corner is yellow, fading to
`orange and the bottom right corner is red and pink. The top of the square is blue and purple,
`fading to pink. There is another rounded square superimposed upon the larger square in white
`containing a white circle and another smaller white circle above and to the right of the larger
`circle.
`
`SER. NO. 87-033,951, FILED 05-11-2016
`AHSEN M KHAN, EXAMINING ATTORNEY
`
`

`

`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`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 Excusable Nonuse) and an Application
`
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
` and  an  Application for Renewal
`You must file a Declaration of Use (or Excusable Nonuse)
`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 Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the U.S. registration date (not the international registration date).  The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
`nationally issued registrations.  See 15 U.S.C. §§1058, 1141k.  However, owners of international registrations
`do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
`international registration at the International Bureau of the  World Intellectual Property Organization, under
`Article 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.wipo.int/madrid/en/.
`
`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 of protection, you can file the registration maintenance documents referenced above online at h
`ttp://www.uspto.gov.
`
`NOTE:  A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic  Application System (TEAS) Correspondence  Address and Change of Owner  Address Forms
`available at http://www.uspto.gov.
`
`Page: 2 of 2 / RN # 5198379
`
`

`

`Generated on: This page was generated by TSDR on 2021-03-10 19:56:05 EST
`
`Mark:
`
`US Serial Number: 87033951
`
`US Registration
`Number:
`
`5198379
`
`Filed as TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`May 11, 2016
`
`Registration Date: May 09, 2017
`
`Currently TEAS RF: Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: May 09, 2017
`
`Publication Date: Feb. 21, 2017
`
` 
`
`Mark Literal
`Elements:
`
`None
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`2 - AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S)/NUMBER(S)
`
`The mark consists of a rounded square wherein the bottom left corner is yellow, fading to orange and the bottom right corner is red and
`pink. The top of the square is blue and purple, fading to pink. There is another rounded square superimposed upon the larger square in
`white containing a white circle and another smaller white circle above and to the right of the larger circle.
`
`Color Drawing: Yes
`
`Color(s) Claimed: The color(s) yellow, white, orange, pink, purple, red and blue is/are claimed as a feature of the mark.
`
`Design Search
`Code(s):
`
`26.01.02 - Plain single line circles; Circles, plain single line
`26.01.13 - Two circles; Circles, two (not concentric)
`26.01.21 - Circles that are totally or partially shaded.
`26.09.21 - Squares that are completely or partially shaded
`
`Foreign Information
`
`Priority Claimed: Yes
`
`068718
`
`Foreign
`Application
`Number:
`
`Foreign
`Application/Registration
`Country:
`
`JAMAICA
`
`Foreign
`Application Filing
`Date:
`
`Nov. 25, 2015
`
`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: Marketing, advertising and promotion services; Dissemination of advertising for others 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; Online advertisements
`
`

`

`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: May 11, 2016
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: Yes
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 100, 101, 102
`
`Use in Commerce: May 11, 2016
`
`Basis Information (Case Level)
`
`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
`
`Attorney Primary
`Email Address:
`
`tmadmin@kilpatricktownsend.com
`
`Attorney of Record
`
`Docket Number: 1009065
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`ANTHONY J. MALUTTA
`KILPATRICK TOWNSEND & STOCKTON LLP
`TWO EMBARCADERO CENTER, 19TH FLR.
`SAN FRANCISCO, CALIFORNIA UNITED STATES 94111
`
`Phone: 415-576-0200
`
`Fax: 415-576-0300
`
`Correspondent e-
`mail:
`
`tmadmin@kilpatricktownsend.com amalutta@kilp
`atricktownsend.com kkappes@kilpatricktownsend.
`com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Ma