Benq Corporation

Trademark Trial and Appeal Board

Mar 23, 2021

88423006 (T.T.A.B. Mar. 23, 2021)

Mailed: March 23, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Benq Corporation
_____
Serial No. 88423006
_____
Michael T. Smith of Birch, Stewart, Kolasch & Birch, LLP
for Benq Corporation.

Harini Ganesh, Trademark Examining Attorney, Law Office 122,
Kevin Mittler, Managing Attorney.
_____
Before Adlin, Heasley and Pologeorgis, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Benq Corporation seeks a Principal Register registration for the mark
INSTASHARE, in standard characters, for:
digital signs; electronic interactive whiteboards;
video screens; downloadable computer software to enable
uploading, downloading, accessing, posting, displaying,
blogging, linking, sharing or otherwise providing electronic
media or information via computer, the internet and other
communication networks; downloadable computer
application software for mobile communication devices,
namely, software to enable uploading, downloading,
accessing, posting, displaying, blogging, linking, sharing or
otherwise providing electronic media or information via
computer and communication networks; downloadable
software in the nature of a mobile application for use with
computers, portable handheld digital electronic
communication devices, mobile communication devices,
This Opinion is Not a
Precedent of the TTAB
Serial No. 88423006
2
and wired and wireless communication devices for
creating, sharing, and posting content and blogs on the
Internet, in International Class 9;

computer-aided transmission of messages and images;
streaming of data; transmission of digital files; wireless
broadcasting, in International Class 38; and

software development in the framework of software
publishing; updating of computer software; software as a
services (SaaS) services featuring software to enable or
facilitate the uploading, downloading, streaming, editing,
modifying, posting, displaying, linking, sharing,
transmission or otherwise providing of photographs,
videos, music, avatars, and electronic media or information
over the internet and communication networks, in
International Class 42.1

The Examining Attorney refused registration in connection with the identified goods
and services, except those presented in bold above, under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the following two marks registered to Instagram that it is likely to cause
confusion:
INSTA, in standard characters, for: downloadable
computer software for modifying the appearance and
enabling transmission of photographs; computer software
for the collection, editing, organizing, modifying,
transmission, storage and sharing of data and information;
computer software to enable uploading, downloading,
accessing, posting, displaying, tagging, blogging,
streaming, linking, sharing or otherwise providing
electronic media or information via computer and
communication networks, in International Class 9 (the
“’916 Registration”); 2 and

1 Application Serial No. 88423006, filed May 9, 2019 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged bona fide intent to use the mark in commerce.
2 Registration No. 5061916, issued October 18, 2016.
Serial No. 88423006
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for: many goods and services in
International Classes 9, 38, 41, 42 and 45.3

After the refusal became final, Applicant appealed and filed a request for
reconsideration which was denied. The appeal is fully briefed. We affirm the refusal
to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”)
(setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor
about which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).

3 Registration No. 4531884, issued May 20, 2014; Section 8 Affidavit accepted.
Serial No. 88423006
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We focus here on the cited ’916 Registration. If we find confusion likely between
Applicant’s involved mark and the cited standard character INSTA mark, we need
not consider the likelihood of confusion between Applicant’s mark and the cited
camera design mark. On the other hand, if we find no likelihood of confusion between
Applicant’s mark and INSTA in standard characters, we would not find confusion
likely between Applicant’s mark and the cited design mark.
A. The Goods and Services, Channels of Trade and Classes of
Consumers
The goods and services are legally identical, or, to the extent they are not, quite
closely related on their face. In fact, Registrant’s “computer software for the
collection, editing, organizing, modifying, transmission, storage and sharing of data
and information” is identified broadly, and appears to cover much of what people do
on the Internet. At the very least, this part of Registrant’s identification encompasses
Applicant’s “downloadable computer software to enable uploading, downloading,
accessing, posting, displaying, blogging, linking, sharing or otherwise providing
electronic media or information via computer, the internet and other communication
networks,” and thus Applicant’s Class 9 goods are legally identical in part to
Registrant’s Class 9 goods.
While Applicant also identifies services in Classes 38 and 42, and the cited mark
is registered for goods in Class 9, in this case, Applicant’s services are nevertheless
legally identical in at least function and subject matter to Registrant’s Class 9 goods.
Indeed, in the current Internet and software environment (and marketplace), there
is no substantive or meaningful difference between, on the one hand, Registrant’s
Serial No. 88423006
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software for sharing, storing and manipulating data and information, and on the
other some of Applicant’s services in each class. For example, Registrant’s
sharing/storing software performs the same functions as Applicant’s “computer-aided
transmission of messages and images” and “transmission of digital files” in Class 38,
and Applicant’s software as a service “to enable or facilitate the uploading,
downloading, streaming, editing … sharing … of … information over the internet and
communication networks” in Class 42. In fact, it is obvious from the face of Applicant’s
identification that its “computer-aided transmission of messages and images” and
“transmission of digital files” is performed by software, and its Class 42 “software as
a services (SaaS) services” make that connection explicit. Cf. In re JobDiva, Inc., 843
F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (“We agree with the Board's initial
observation that, with modern technology, the line between services and products
sometimes blurs . . . . [C]areful analysis is required to determine whether web-based
offerings, like those JobDiva provides, are products or services.”); In re Ancor
Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006) (“[I]n today’s commercial context
if a customer goes to a company’s website and accesses the company’s software to
conduct some type of business, the company may be rendering a service, even though
the service utilizes software.”).
In any event, the Examining Attorney has introduced evidence that a number of
third-parties provide software encompassed by or substantially similar to
Registrant’s Class 9 goods on the one hand, and transmission and software as a
service services encompassed by or substantially similar to Applicant’s Class 38 and
Serial No. 88423006
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42 services on the other. October 1, 2019 Office Action TSDR 14-25; January 21, 2020
Office Action TSDR 9-19. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (crediting relatedness evidence showing that third parties
use the same mark for the goods and services at issue because “[t]his evidence
suggests that consumers are accustomed to seeing a single mark associated with a
source that sells both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells the
goods and services of both parties, if presented, is relevant to a relatedness analysis”).
Applicant does not dispute that the goods and services are legally identical in part,
or that they are very closely related. The identifications of goods establish that
Applicant’s and Registrant’s Class 9 goods are legally identical, and the evidence of
record (and identifications of goods and services) establish that Registrant’s goods are
at the very least quite closely related to Applicant’s Class 38 and 42 services. This
factor therefore not only weighs heavily in favor of finding a likelihood of confusion,
but it also reduces the degree of similarity between the marks necessary to find a
likelihood of confusion. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010); In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
Furthermore, with respect to Applicant’s and Registrant’s Class 9 goods, we
presume that the channels of trade and classes of purchasers for those goods are also
the same. See In re Viterra, 101 USPQ2d at 1908 (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
Serial No. 88423006
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on this legal presumption in determining likelihood of confusion); In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research
Instit., 101 USPQ2d 1022, 1028 (TTAB 2011). With respect to Applicant’s Class 38
and 42 services, the evidence of record establishes that those services travel in the
same channels of trade to the same consumers as Registrant’s Class 9 goods. October
1, 2019 Office Action TSDR 14-25; January 21, 2020 Office Action TSDR 9-19. These
factors therefore also weigh in favor of finding a likelihood of confusion.
B. The Marks
Applicant bases its appeal on alleged differences between the marks, and on the
alleged weakness of the marks’ shared term INSTA:
In the present case, the matter common to the marks,
“INSTA,” is being used descriptively in Applicant's mark
and will not be perceived as a source identifier; the addition
of SHARE will distinguish the marks and preclude a
likelihood of confusion. “INSTA” is an abbreviation for
“instant” or “instantly,” and is defined as “indicating
instant or quickly produced.” See December 23, 2019
Response to Office Action, p. 2. “INSTA” thus defines a
feature or characteristic of the parties' goods and services,
i.e., they permit quick/instant uploading and sharing of
information, and connotes something that is done quickly.

6 TTABVUE 7. As Applicant points out, “dictionary.com” defines the shared term
“insta” as “indicating instant or quickly produced.” December 23, 2019 Office Action
response TSDR 10.
On the other hand, the Examining Attorney introduced a slang definition of
“Insta” (capitalized) as “of or relating to the photo-sharing application Instagram,”
Serial No. 88423006
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i.e., Registrant. January 21, 2020 Office Action TSDR 7. Thus, INSTAGRAM is
Registrant’s trade name and service mark from which its abbreviated and cited mark
INSTA is derived.4 According to the Urban Dictionary, “insta” is an “abbreviation of
Instagram.” August 10, 2020 Denial of Request for Reconsideration TSDR 5.
Applicant also relies on a number of third-party registrations that include the
shared and allegedly descriptive term INSTA for what Applicant alleges to be related
goods or services. The most relevant of these (because we agree that they are for at
least arguably related goods or services), are as follows:
Mark/Reg. No. Goods/Services

Reg. No. 5271872
computer peripheral devices; web
camera; downloadable computer
software applications for panoramic
imaging technology …

technical research in the field of digital
image technology; research and
development for panoramic imaging
technology
INSTACHAT

Reg. No. 5141127
downloadable software in the nature of a
mobile application for video chatting and
text chatting

INSTACRAFT

Reg. No. 5566757
software for presentation, description,
processing, sale and/or delivery of
consumer goods, horticulture goods, or
craft goods

computerized on-line ordering featuring
general consumer merchandise; on-line
retail store services featuring a wide
variety of consumer goods of others
INSTAPAPER

downloadable software in the nature of a
mobile application that enables users to

4 It does not escape notice that the definition upon which Applicant relies lists “Instagram”
(Registrant) as a “word nearby insta.” December 23, 2019 Office Action response TSDR 10.
Serial No. 88423006
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Reg. No. 4008594 download and save information from
other websites to read later using a
computer, printed paper, electronic
reading device, or mobile device

providing temporary use of on-line non-
downloadable software and applications
that enable users to download and save
information from other websites to read
later using a computer, printed paper,
electronic reading device, or mobile
device
INSTAWEB

Reg. No. 5311828
downloadable mobile applications for
creating and customizing web sites, and
not for photo or video sharing or editing,
or social networking

December 23, 2019 Office Action response TSDR 14-96.5
These third-party registrations tend to “show the sense in which [the term INSTA]
is used in ordinary parlance.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting 2 McCarthy on Trademarks
and Unfair Competition § 11:90 (4th ed. 2015)) (“‘[a] real evidentiary value of third
party registrations per se is to show the sense in which … a mark is used in ordinary
parlance’). “Third party registrations are relevant to prove that some segment of the
composite marks which both contesting parties use has a normally understood and

5 We have not considered cancelled registrations, those for which use in the United States
has not been established, or any of the 1,100+ pages of foreign registrations Applicant relies
upon. July 20, 2020 Request for Reconsideration TSDR 61-1162. We have not considered the
foreign registrations because they are foreign. Cf. In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1835 (Fed. Cir. 2007) (“Evidence of registration in other countries is not legally or
factually relevant to potential consumer perception of Bayer’s analgesic goods in the United
States.”).
Serial No. 88423006
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well recognized descriptive or suggestive meaning, leading to the conclusion that that
segment is relatively weak.” Id.
Based on this evidence, we agree with Applicant that INSTA, the entirety of
Registrant’s mark and the first part of Applicant’s mark, is conceptually weak for
Applicant’s and Registrant’s identified goods and services, and related goods and
services, because it conveys “instant” or quick, a valuable feature of those goods and
services. Applicant goes much too far, however, and beyond what is legally
permissible, when it argues that INSTA is “descriptive.”
In fact, Applicant’s primary argument in this case constitutes an impermissible
collateral attack on the cited registration. In this ex parte proceeding, “inasmuch as
the cited mark is registered on the Principal Register, we must assume that it is at
least suggestive, and we cannot entertain Applicant’s argument that the registered
mark is descriptive of Registrant’s” goods. In re Fiesta Palms, 85 USPQ2d 1360, 1363
(TTAB 2007) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35
(Fed. Cir. 1997)). Moreover, it is settled “that likelihood of confusion, mistake or
deception is to be avoided as much between weak marks as between strong marks.”
In re Colonial Stores, Inc., 216 USPQ 793, 795 (TAB 1982) (citing King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)).
When we keep in mind, as we must, that Registrant’s mark is inherently
distinctive, we find that it is not so weak that Applicant’s mark is entitled to
registration for in-part legally identical goods and otherwise closely related goods and
services. The marks are simply too similar “in their entireties as to appearance,
Serial No. 88423006
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sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567).
Specifically, the shared term INSTA is the dominant feature in Applicant’s mark,
for two reasons. First, it is dominant because the second part of Applicant’s mark,
SHARE, is merely descriptive of Applicant’s goods and services. Indeed, the purpose
of Applicant’s Class 9 software, as identified, is “to enable … sharing … via
computer, the internet and other communication networks,” just as Applicant’s
mobile application, as identified, is for “sharing, and posting content and blogs on
the Internet.” Similarly, Applicant’s Class 42 SaaS services “enable or facilitate …
sharing, transmission or otherwise providing of photographs, videos, music, avatars,
and electronic media or information over the internet and communications networks.”
Applicant’s Class 38 transmission, streaming and broadcasting services necessarily
involve “sharing” of whatever is being transmitted, streamed or broadcast. It is
settled that descriptive terms such as SHARE are entitled to less weight in our
analysis. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 752 (Fed. Cir. 1985)); see also In re Dixie Rests., 41 USPQ2d at 1533-34 (DELTA,
not descriptive term CAFÉ, is the dominant portion of the mark THE DELTA CAFÉ).
Second, INSTA is dominant in Applicant’s mark because it comes first. In re
Serial No. 88423006
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Detroit Athletic, 128 USPQ2d at 1049 (“The identity of the marks’ initial two words
is particularly significant because consumers typically notice those words first.”);
Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”); see also, Palm Bay Imps., 73 USPQ2d at 1692; Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Because Applicant’s mark features the entirety of Registrant’s mark, and that
shared, inherently distinctive term comes first in Applicant’s mark, the marks look
and sound similar. Moreover, because the marks are used for in-part legally identical
goods, and otherwise closely related goods and services, and the other term in
Applicant’s mark is merely descriptive, the marks convey similar meanings and
create similar commercial impressions. They both impress upon consumers that the
transmission, posting, streaming, linking and sharing enabled by the goods and
services will be “instant,” an attribute made possible because the goods and services
are all Internet and computer-based.
In fact, because the shared term INSTA may refer specifically to Registrant
Instagram − a service apparently so popular that it appears in dictionary definitions
− consumers familiar with Registrant who encounter Applicant’s mark may perceive
it as a new or more specific version of Registrant’s INSTA mark. Indeed, Applicant’s
goods and services, as identified, are substantively equivalent to Instagram’s
software. Applicant’s services are identified by a mark which combines Registrant’s
Serial No. 88423006
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nickname (INSTA) with a term that immediately describes Registrant’s services
(SHARE). For some consumers, it might be hard to draw any other conclusion.
C. Lack of Actual Confusion
Applicant argues that there has been concurrent use of the marks for a period of
time without actual confusion. 9 TTABVUE 4-5. The only evidence regarding
Applicant’s actual use does not show that there has been a meaningful opportunity
for confusion to occur, however, because Applicant’s evidence does not reveal its use
of INSTASHARE in connection with social media, or the same types of “sharing” as
Registrant provides. July 20, 2020 Request for Reconsideration TSDR 41-58. There
is therefore no evidence that would enable us to gauge whether or the extent to which
there has been an opportunity for confusion to occur if it were likely to occur. See
Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed.
Cir. 1989) (“The absence of any showing of actual confusion is of very little, if any,
probative value here because (1) no evidence was presented as to the extent of ETF’s
use of the VITTORIO RICCI mark on the merchandise in question in prior years ….”);
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, a lack
of evidence of actual confusion carries little weight in an ex parte case such as this.
Majestic Distilling, 65 USPQ2d at 1205. “[I]t is unnecessary to show actual confusion
in establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This factor is neutral.
II. Conclusion
The goods and services are legally identical in part and otherwise closely related,
and travel in the same channels of trade to the same consumers. While Registrant’s
Serial No. 88423006
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cited mark is conceptually fairly weak, we must presume that it is inherently
distinctive, and it is entitled to protection against Applicant’s similar mark.
Confusion is likely.

Decision: The refusal to register Applicant’s mark for the refused goods and services
under Section 2(d) of the Trademark Act is affirmed. The application will proceed to
registration for “digital signs; electronic interactive whiteboards; video screens” in
International Class 9; and “software development in the framework of software
publishing” in International Class 42.