24 September 2018Trademarks

Voicemail app hits Instagram with TM non-infringement suit

US-based voicemail app Kirusa has claimed that its ‘Instavoice’ trademark does not infringe the rights of social media platform Instagram.

Kirusa filed a declaratory judgment of non-infringement and non-dilution of Instagram’s trademarks at the US District Court for the District of Delaware on Friday, September 21.

In January 2013, after a 30-day opposition period during which nobody opposed the ‘Instavoice’ application, the US Patent and Trademark Office (USPTO) granted Kirusa a trademark.

According to the USPTO, the mark was not confusingly similar to earlier marks.

In 2015, Instagram sent Kirusa a cease-and-desist letter as part of a “larger campaign to cleanse” the USPTO register of any marks using the ‘Insta’ and ‘gram’ prefixes and suffixes, the suit said.

Following correspondence between the companies, Instagram filed a cancellation action with the Trademark Trial and Appeal Board (TTAB) in September 2017, seeking to cancel Kirusa’s trademark.

In its filing, the social media company alleged that its ‘Instagram’ marks have priority over Kirusa’s mark and that they create similar commercial impressions.

Facebook, Instagram’s parent company, then removed the ‘Instavoice’ apps from Facebook and blocked Kirusa from linking its app with Facebook.

Kirusa alleged that Facebook then began disabling the Facebook accounts of Kirusa employees.

The company argued that ‘Insta’ and ‘gram’ are both non-distinctive. According to the claim, Instagram has opposed over 200 trademarks or trademark applications before the TTAB.

The voicemail service accused Instagram of engaging in “objectively baseless litigation in an unlawful effort to prevent the registration and/or use of marks that businesses adopted in good faith”.

Kirusa said that it selected the prefix ‘Insta’ because of its association with the notion of “instant” or “fast” and claimed that it “captured the essence” of the technology.

The company also cited Instagram’s own terms of use, which state that it is acceptable for third parties to use either “Insta” or “gram” in a product name, but not both.

Kirusa claimed that by allowing this, Instagram acknowledged the weakness of the elements when used individually.

In addition, Kirusa argued that its ‘Instavoice’ app does not compete with Instagram and that it offers different services.

“To Kirusa’s knowledge, its use of the ‘Instavoice’ marks has never caused an instance of consumer confusion as to the source, affiliation, or sponsorship of any of its products or services,” added Kirusa.

Kirusa asked the court to find the term ‘Insta’ generic and to issue an injunction against Instagram preventing it from prosecuting or threatening any action against Kirusa. The company also asked that Facebook be stopped from blocking Kirusa’s access to the social media platform.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories

Fed Circuit vacates $140m award in ‘entire market value’ appeal

Tech associations back FTC in Qualcomm FRAND dispute

Clampdown on piracy for Anthony Jordan fight

Marques 2018: Brexit update reveals hope despite uncertainties

Marques 2018: Swarovski and Chanel reveal fashion IP difficulties

Goodwin Procter adds senior counsel from Orrick

Montgomery McCracken adds IP of counsel

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk

More on this story

24 November 2016   Social networking company Instagram has opposed a trademark filed by Microsoft for the term ‘Actiongram’.
5 February 2018   Miami-based UnitedCorp has taken on photo-sharing platform Instagram in a patent infringement lawsuit filed at the Federal Court of Canada.