Instagram, LLCv.Brian Sherman Haight

Trademark Trial and Appeal Board

Aug 16, 2018

No. 92063830 (T.T.A.B. Aug. 16, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 16, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Instagram, LLC
v.
Brian Sherman Haight
_____

Cancellation No. 92063830
_____

Larry McFarland, Peter Kidd, and Gia L. Cicone of Kilpatrick Townsend &
Stockton, LLP, for Instagram, LLC.

Michael L. Rodenbaugh of Rodenbaugh Law,
for Brian Sherman Haight.
_____

Before Zervas, Bergsman, and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Instagram, LLC (“Petitioner”) filed a petition to cancel the registration of the mark
INSTA (standard characters) for “promoting the sale of goods and services of others
by providing instant QR-code1 generated coupons and discounts to a mobile device,”

1 A “QR-code” is defined as a “matrix bar code.” Dictionary.com based on the Random House
Unabridged Dictionary (2018). The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110
USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016);
Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re
Cancellation No. 92063830
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in Class 35, owned by Brian Sherman Haight (“Respondent”).2 Petitioner alleges that
Respondent has abandoned the mark with no intent to resume use. Respondent, in
his Answer, denies the salient allegations in the Petition for Cancellation.
I. Preliminary Issue
Both parties have lodged numerous objections. None of the evidence sought to be
excluded is outcome determinative. Moreover, the Board is capable of weighing the
relevance and strength or weakness of the objected to testimony and evidence,
including any inherent limitations. As necessary and appropriate, we will point out
any limitations in the evidence or otherwise note that the evidence cannot be relied
upon in the manner sought. In doing so, we have kept in mind the various objections
raised by the parties and we have accorded whatever probative value the subject
testimony and evidence merit. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C.,
121 USPQ2d 1477, 1479 (TTAB 2017).

Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). An image of a QR-code is reproduced
below from Respondent’s discovery deposition, Exhibit 2 (11 TTABVUE 64).

2 Registration No. 4341689, registered May 28, 2013.

-
Cancellation No. 92063830
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II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration file. The parties introduced the
testimony and evidence listed below:
A. Petitioner’s testimony and evidence
1. A notice of reliance on the following items:

a. A copy of Petitioner’s application Serial No. 86725463 for the mark
INSTA and design, shown below,3

for the services listed below, printed from the USPTO electronic
database.

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; Providing online advertising services for others;
Providing online advertising on computer networks, in Class 35.

3 11 TTABVUE 6. The application includes the following description of the mark:
The color(s) white, black, brown, red, yellow, green and blue
is/are claimed as a feature of the mark. The mark consists of a
stylized image of the front of a brown and white camera with a
black lens in the center, a black viewfinder in the upper-right
portion, and the white letters “I”, “N”, “S”, “T”, “A” inside a brown
oval to the left of the lens. Above the letters are vertical lines
which are red, yellow, green and blue.
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b. A copy of the December 4, 2015 Office Action in Petitioner’s above-
noted application Serial No. 86725463 citing Respondent’s
registration as a Section 2(d) bar to registration.4

c. Respondent’s responses to Petitioner’s first set of interrogatories.5

d. Excerpts from Respondent’s discovery deposition.6

e. Copies of screen shots from the cleantalk.org website.7

2. Testimony declaration of Carlo Vogel, a private investigator specializing
in intellectual property related investigations.8

3. Rebuttal testimony declaration of Cliff Petrovsky, President of
Investigative Network, Inc., an investigative firm specializing in
trademark and intellectual property matters.9

B. Respondent’s testimony and evidence.
1. Respondent’s testimony declaration.10
2. Notice of reliance on the following items:
a. Excerpts from Respondent’s discovery deposition which pursuant to
Trademark Rule 2.120(k)(4), 37 C.F.R. § 2.120(k)(4), “should in
fairness be considered so as to make not misleading what was offered
by the submitting party.”11

b. Respondent’s LinkedIn profile.12

4 11 TTABVUE 11.
5 11 TTABVUE 22.
6 11 TTABVUE 30.
7 11 TTABVUE 76.
8 12 TTABVUE.
9 16 TTABVUE.
10 14 TTABVUE.
11 15 TTABVUE 6.
12 15 TTABVUE 39.
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c. Excerpts from the instastuff.com website (April 2017).13
d. Cross-examination of Carlo Vogel.14
e. Excerpt from the Marksmen.com website.15

III. Standing
A threshold issue in every inter partes case is the plaintiff's standing to challenge
registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). To establish its standing, Petitioner must prove
that it has a “real interest,” i.e., a “reasonable” basis for its belief of damage. See
Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3rd 1092, 50
USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185, 189 (TTAB 1982). We find that Petitioner has adequately
established a real interest in this proceeding through its evidence that it filed a
trademark application with the USPTO for the mark INSTA and design for services
in International Class 35, and that the USPTO issued a refusal to register the
application based on likelihood of confusion with Respondent’s registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).16 See SaddleSprings Inc. v.
Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012) (standing supported by
allegation that petitioner’s intent-to-use application has been refused based on

13 15 TTABVUE 48.
14 15 TTABVUE 75.
15 15 TTABVUE 142.
16 11 TTABVUE 11.
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respondent’s registrations); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036,
1043 (TTAB 2012) (standing shown by evidence that plaintiff’s application was
refused registration in view of defendant’s registration); Fiat Grp. Autos. S.p.A. v.
ISM Inc., 94 USPQ2d 1111, 1112 (TTAB 2010) (the filing of opposer’s application and
the Office’s action taken in regard to that application provide opposer with a basis for
pleading its standing). Respondent, in his brief, does not challenge Petitioner’s
standing.
We find that Petitioner has established its standing to bring the petition for
cancellation.
IV. Abandonment
A. Statement of the Law
The Trademark Act provides for the cancellation of a registration if the registered
mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064.
Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered
abandoned when “its use has been discontinued with intent not to resume such use.”
The definition of abandonment is found in this provision, as follows:
A mark shall be deemed to be “abandoned” if either of the
following occurs:
(1) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for 3 consecutive years
shall be prima facie evidence of abandonment. “Use” of
a mark means the bona fide use of such mark made in
the ordinary course of trade, and not made merely to
reserve a right in a mark.
…
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15 U.S.C. §1127.

Because registrations are presumed valid under the law, the party seeking their
cancellation bears the burden of proving a prima facie case of abandonment by a
preponderance of the evidence. See On-Line Careline Inc. v. Am. Online Inc., 229 F.3d
1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Exec.
Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180-81 (TTAB 2016). If
the petitioner presents a prima facie case of abandonment, the burden of production
(i.e., going forward), then shifts to the trademark holder to rebut the prima facie
showing with evidence. Cerveceria Centroamericana, 13 USPQ2d at 1311.
Abandonment is a question of fact. See Stock Pot Rest., Inc. v. Stockpot, Inc., 737
F.2d 1576, 222 USPQ 665, 667 (Fed. Cir. 1984). Thus, any inference of abandonment
must be based on proven fact. Section 45 of the Trademark Act. See also Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 13 USPQ2d at 1310 (“The protection
due the registrant is provided by requiring that the inference have an adequate
foundation in proven fact. Whenever an inference is based on pure speculation and
‘there is no basis … to infer nonuse,’ a prima facie case of abandonment must fail.”)
(quoting P.A.B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo
di S.A. e. M. Usellini, 570 F.2d 328, 332-33, 196 USPQ 801, 804-05 (CCPA 1978));
Stetson v. Howard D. Wolf & Assoc's, 955 F.2d 847, 21 USPQ2d 1783, 1785 (2d Cir.
1992) (A party claiming that a mark has been abandoned must show “non-use of the
mark by the legal owner and no intent by that person or entity to resume use.”).
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Proof of non-use for three consecutive years, however, constitutes prima facie
evidence of abandonment, because it supports an inference of a lack of intent to
resume use. Section 45 of the Trademark Act. See also Yazhong Investing Ltd. v.
Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1533 (TTAB 2018); On-line
Careline Inc. v. Am. Online Inc., 56 USPQ2d at 1476 (“The party seeking cancellation
establishes a prima facie case of abandonment by showing proof of nonuse for three
consecutive years.”); Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531,
56 USPQ2d 1343 (4th Cir. 2000). As noted above, if the plaintiff establishes non-use
for three consecutive years, the burden shifts to defendant to rebut the prima facie
case by either disproving the three years of nonuse or showing an intent to resume
use. Cerveceria Centroamericana, 13 USPQ2d at 1312.
B. Evidence of Abandonment
Respondent had only two merchants providing coupons for his promotional
services: (i) Bruno’s Pizzeria from November 2012 through January 2013; and (ii)
Paris Jewelry from January 2013 through March 2013.17 Respondent generated
revenue only from January through March 2013.18
Q. So as of April 2013, you had no clients?
A. I had no clients after that point. No active clients…
* * *

17 Respondent’s response to Petitioner’s Interrogatory No. 2 (11 TTABVUE 23); see also
Respondent’s Discovery Dep., pp. 31 and 33-34 (11 TTABVUE 35 and 37-38).
18 Respondent’s response to Petitioner’s Interrogatory No. 5 (11 TTABVUE 25).
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Q. Did you have customers registered during that time
between April 2013 and, I think you said, April
2016?
A. Yeah. There were a handful that registered, just to
check out the service.
Q. Did they get any sort of service when they
registered?
A. It – they would have if I had open retail sites, but I
didn’t. So, no. But they could read about it and kind
of generate interest and that kind of thing. Get
familiar with the - - with the service and the name
and what it does.19
* * *
Q. So is it fair to say that after April 2013, you were not
actually providing instant QR-code-generated
coupons and discounts to a mobile device?
A. I would say I was - - I was planning on doing that
more, but at the - - at that time, I was not. But I’m
still planning on keeping it going, getting it back up
and running.
Q. But as of April 13 [2013] – since April 13 [2013], you
have not actually provided the services that are
listed in this registration [Registration No. 4341689
at issue herein]?
A. I mean, the website is up and running, the - - you
can clearly visit and find out what the service is, but
I didn’t have any active clients at that point.
Q. So no services - -
A. So - -
Q. - - correct?

19 Respondent’s Discovery Dep., pp. 37-38 (11 TTABVUE 41-42).
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A - - no active clients, I would say. But, I mean, you
know, in that time frame, no, I didn’t have an active
service.20
This testimony directly contradicts Respondent’s assertion that “[h]e still has
offered a free service to end-user customers in association with the mark.”21 Because
Respondent did not have any participating retailers after April 13, 2013, it was
impossible for him to offer promotional services in the nature of providing instant
QR-code generated coupons and discounts. When considering the evidence of
Respondent’s use of his INSTA mark, we bear in mind that Section 45 of the
Trademark Act states that:
The term “use in commerce” means the bona fide use of a
mark in the ordinary course of trade, and not made merely
to reserve a right in a mark. For purposes of this chapter,
a mark shall be deemed to be in use in commerce —
(2) on services when it is used or displayed in the sale
or advertising of services and the services are rendered
in commerce, or the services are rendered in more than
one State or in the United States and a foreign country and
the person rendering the services is engaged in commerce
in connection with the services. (Emphasis added).
Petitioner has established a prima facie case of abandonment based on at least
three consecutive years of nonuse from April 13, 2013 through April, 13, 2016 by
reliance on Respondent’s testimony and responses to Petitioner’s interrogatories.
Thus, the burden of going forward and rebutting the prima facie showing, with
evidence, shifts to Respondent. Societe Des Produits Marnier Lapostolle v. Distillerie

20 Respondent’s Discovery Dep., pp. 38-39 (11 TTABVUE 42-43).
21 Respondent’s Brief, p. 7 (21 TTABVUE 8).
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Moccia S.R.L., 10 USPQ2d 1241, 1244 (TTAB 1989) (evidence of non-use for two year
is sufficient to raise presumption of abandonment and shift the burden to respondent
to rebut the inference of abandonment).
C. Respondent’s intent not to resume use
In analyzing the evidence regarding whether Respondent discontinued use of his
mark with no intent to resume use, we are mindful that a “registrant’s proclamations
of his intent to resume or commence use in United States commerce during the period
of nonuse are awarded little, if any, weight.” Rivard v. Linville, Rivard v. Linville,
133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); (citing Imperial Tobacco Ltd.
v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1394 (Fed. Cir. 1990) (“In
every contested abandonment case, the respondent denies an intention to abandon
its mark; otherwise there would be no contest.”)).
[A]n affirmative desire by the registrant not to relinquish
a mark is not determinative of the intent element of
abandonment under the Lanham Act. Nothing in the
statute entitles a registrant who has formerly used a mark
to overcome a presumption of abandonment arising from
subsequent nonuse by simply averring a subjective
affirmative “intent not to abandon.”
* * *
Intent to resume use in abandonment cases has been
equated with a showing of special circumstances which
excuse a registrant's nonuse. … If a registrant's nonuse is
excusable, the registrant has overcome the presumption
that its nonuse was coupled with an “intent not to resume
use,” or, as Imperial would have it, an “intent to abandon.”
If the activities are insufficient to excuse nonuse, the
presumption is not overcome. [Internal citations omitted]
Imperial Tobacco, 14 USPQ2d at 1395.
Cancellation No. 92063830
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Insofar as the steps Respondent has taken to resume use, Respondent has
introduced the testimony and evidence listed below:
• From September 2012 through April 2016, Respondent estimated that
he spent in excess of 120 hours on website design and implementation, in excess of
120 hours on “SEO” analysis and marketing, and 20 hours on creating sales
presentations.22
• Respondent’s instastuff.com website has remained active and, since
2013, he has had 6,000 visitors.23
I mean I had 6,000 visitors between 2013 and 2016. I had
66 visitors in April of 2015 itself. And there would - - it’s
just traffic there, checking out the service and seeing what
I’m doing. Just kind of driving interest.24
• Since April 2013, Respondent has been too busy to recruit new clients
himself,25 and “was not actively marketing the service to retailers.”26 To find sales
people, Respondent “talked to friends and family and people that I’ve worked with in
the past,” including former colleagues.27 However, Respondent “just couldn’t find

22 Respondent’s response to Petitioner’s Interrogatory No. 4 (11 TTABVUE 24-25).
23 Respondent’s Discovery Dep., p. 37 (11 TTABVUE 41); see also id. at p. 39 (11 TTABVUE
43) (“I mean, the website is up and running, the - - you can clearly visit and find out what the
service is, but I didn’t have any active clients at that point.”).
24 Id. at p. 37 (11 TTABVUE 41); see also Respondent’s Testimony Decl. ¶4 (14 TTABVUE 3).
25 Respondent’s Discovery Dep., pp. 71-71 (11 TTABVUE 60-61).
26 Respondent’s Testimony Decl. ¶5 (14 TTABVUE 3).
27 Respondent’s Discovery Dep., p. 43 (11 TTABVUE 44); see also id. at p. 69 (15 TTABVUE
24) (Respondent recalled conversations with three different friends at various times ranging
from a “couple of months ago” [from February 3, 2017], “last year,” and “probably two years
ago”).
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somebody to really help me try to figure out how to sell this thing.”28 Respondent does
not recall any email communications regarding his seeking sales help because
“[m]ostly, it was a - - it was a - - just trying to sit down and have lunch with somebody
and talk to them about it.”29
• Respondent made content changes on his website.
Q. What sorts of changes?
A. Just tweaking the copy and the keywords and the
meta tags here and there to try to make sure that
the content is relevant. There’s not a ton of copies.
So just tweaks to the copy.30
* * *
A. But there are lots of things that changed, including
the alt image tags and the meta description, the
meta keywords that are in the source code that you
wouldn’t see [on screen shots of the website].31
• Respondent removed his website on April 22, 2016 to save money and to
revise the design.32 He relaunched the website in November 2016, after Petitioner
filed the petition to cancel.33

28 Respondent’s Discovery Dep., p. 44 (11 TTABVUE 45).
29 Respondent’s Discovery Dep., p. 45 (11 TTABVUE 46); see also id. at p. 71 (11 TTABVUE
60).
30 Respondent’s Discovery Dep., pp. 45-46 (11 TTABVUE 46-47).
31 Respondent’s Discovery Dep., p. 48 (11 TTABVUE 49).
32 Respondent’s Discovery Dep., p. 50 (11 TTABVUE 51).
33 Id.
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• Respondent has been taking classes since the middle of 2016 to learn
programming language to create an application for a smartphone.34
The testimony or evidence that Respondent had an intent to resume use of the
mark after he stopped using it in April 2013 is insufficient to rebut Petitioner’s prima
facie case of abandonment. Respondent did not take any steps to market his service
to participating retailers, or to consumers, other than maintaining his website. Thus,
Respondent has not engaged in the type of activity necessary to resume his
promotional services using QR-code generated coupons and discounts. See
Volkswagewerk Aktiengesellschaft v. Advance Welding and Mfg. Corp., 193 USPQ
673, 676-77 (TTAB 1976) (because respondent failed to take meaningful steps to raise
the capital necessary to manufacture the products, respondent was unable to show
an intent not to abandon its mark); Hamilton Burr Publ’g Co. v. E. W. Commc’n, Inc.,
216 USPQ 802, 807 (TTAB 1982) (where reuse of the mark is speculative, defendant
failed to rebut the presumption of an intent not to resume use). Respondent’s
interrogatory response that he has spent, in excess of 120 hours on “SEO” analysis
and marketing is an unsubstantiated assertion of a vaguely defined effort. Moreover,
it is contradicted by Respondent’s testimony that he has been too busy to recruit new
clients and actively market to retailers.

34 Respondent’s Discovery Dep., p. 50-51 (11 TTABVUE 51-52); see also Respondent’s
Testimony Decl. ¶¶7 and 10 (14 TTABVUE 3 and 4). Respondent’s discovery deposition was
taken on February 3, 2017 and he testified that he started taking online programming classes
“mid last year” (i.e., June 2016). Respondent’s Discovery Dep., p. 51 (11 TTABVUE 52).
Cancellation No. 92063830
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Further, there is no testimony or evidence as to when Respondent intended to
resume use of his mark. See Yazhong Investing, 126 USPQ2d at 1539 (potential use
at some unknown point in the future is insufficient to show an intent to resume use);
Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d at 1198-99 (plans to
resume use must be within the reasonably foreseeable future); Emergency One, Inc.
v. Am. FireEagle, Ltd., 56 USPQ2d at 1348 (“Once the challenger shows discontinued
use, the owner must produce evidence of intent to resume use ‘within the reasonably
foreseeable future.’ … Of course, what is meant by the ‘reasonably foreseeable future’
will vary depending on the industry and the particular circumstances of the case …
it might be reasonable for a fire truck manufacturer to spend five or six years
considering the reintroduction of a brand, even though the same passage of time
would be unreasonable for a maker of a more ephemeral product, say potato chips.”).
Suffice it to say, Respondent failed to show any evidence of a specific and consistent
plan to resume use.
Accordingly, we find that Respondent abandoned his mark because there was
nonuse from at least April 2013 through April 2016 with no intent to resume use.

Decision: The petition to cancel Registration No. 4341689 for the mark INSTA is
granted.