Grabbeh

There's a difference between fair use and taking unfair advantage of a brand owner'S trade mark. Your example would be likely to fall within the nominative use bracket as you're using the term to describe an attribute of the product. On the other hand, using a third party's trade mark with a clear intention of free-riding on their goodwill will be considered to take unfair advantage of that goodwill and be an infringement of trade mark law. Rolex Tractors would be an unlikely example.

You are right that making it clear the lack of affiliation is a positive step towards reducing confusion.

However there are some weaknesses in the solution (and reasons therefore why a brand owner would continue to pursue). When it comes down to it, the trade mark itself is still problematic, and there will still be cases where the trade mark is used in the absence of the disclaimer. Also, as a brand owner I don't want to have to continue to monitor the third party user just to make sure they continue to use the disclaimer.

Also, in addition to the confusion argument, there is also the argument that absent confusion, the third party is essentially looking to free-ride on the goodwill of the brand owner. That cause of action doesn't require confusion to be proved.

It's really down to Instagram and how they want to play it. Having a settlement agreement obliging Littergram to include the disclaimer in various places at all times may be sufficient. But the fact is, Instagram hold quite a strong hand and don't need to settle for just disclaimer, nor for the above reasons would that be advisable.

I suspect Instagram are pretty darn happy with their choice of trade mark at this present moment in time. Trade mark enforcement is an inevitable aspect of becoming a large brand and here I think they have a legitimate interest in pursuing the guy. Also Instagram was not an already established word as far as I'm aware and was developed purely as a brand name for a photo-sharing app, and is therefore particularly distinctive. Happy to be corrected though.

In terms of the motivations, sure the guy is trying to stop people littering, but next thing you know, he's transitioned into selling ad space and is making his millions, all after free-riding on Instagram's goodwill in the name. I'm being facetious of course, but you don't know what will happen in the future. The context behind the use is also likely to have tempered Facebook's approach to the infringement. For all we know, they may have offered to help with the rebrand costs.

I don't know of many companies who adopt a completely over-zealous approach to trade mark enforcement. Do you know any that fall within the type you describe in your post?

Finally, I don't know who your lawyer is, but in the unlikely event the matter went to court, or to a trade mark authority's dispute resolution process, you would run an argument precisely in line with the one you describe. You would look to have the trade mark registration invalidated on the basis that it is descriptive and was therefore not suitable to be registered. I don't think you'd get very far but you'd make the argument all the same.

I don't think trade mark ownership is in itself the problem. Trade marks serve a useful economic purpose in helping consumers to easily distinguish between products in the marketplace. I have no issue with companies using trade marks for this purpose as without them consumer confusion would be rife, and there's a legitimate interest in allowing companies to police use of their brand names.

The problem arises when a company looks to abuse its trade mark rights and prevent usage of other brand names which to most reasonable people would never actually be confused with the trade mark owner's brand.

I always want to be in the underdog's corner, but I have sympathy with Instagram here I must admit. The origin of 'gram' is irrelevant. The fact is that we are dealing with two apps with very similar functionality, who both share the word 'gram'.

On that basis, I think there is a high likelihood of confusion in relation to the origin of the app. There's a decent chance that a certain proportion of the relevant population could think that Littergram is an official offshoot of Instagram.

It's also likely that the name was also chosen to free-ride off Instagram's goodwill to attract attention to the app.

To be fair though, he has got good publicity for the app as a result of the cease and desist, which if he hadn't named it Littergram he would never have got. I doubt Instagram would pursue a damages claim and so both parties can presumably walk away if he changes the name.