The idea that large companies can own a word, that they themselves have appropriated, is at least egotistical, at worst unethical (imo).
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.
Car manufacturers and other industries spend fortunes on branding, app manufacturers by contrast appear to feel obligated to choose a random word and then scream "this is mine now talk to legal la la la I can't hear you".
Ianal but I would (theoretically and against my real lawyer's advice) argue in court that Instagram should have had better foresight than to use an already established word that is taken to mean "short message of indiscriminate content".
Of course the easy way out here is for Insta- i forget, oh yes gram, to pay the littergram bloke's costs for changing the name of his app and then help him to promote the new name. Saying as he is actually doing something a lot more worthwhile than sending shitposts from teen to teen. But why let decency get in the way of POWERSTRIDES THROUGH THE OFFICE LIKE A TRUE TECH-CONQUEROR SPITTING ON THE COMMONERS ... I FEEL SO STRONG NOW, NO-ONE CAN CHALLENGE ME.
I mean, the guy is trying to stop littering, he's not doing anything untoward.
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.
Let's take a ridiculous example, and say this guy changes his app name to "Littergram - a random mobile app that is completely unrelated to Instagram, and in no way whatsoever affiliated with Instagram, Inc. We are NOT Instagram.". How could they, at that point, argue this could confuse people?
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.
But can one consider that infringement? I would assume something like that to fall under a fair use doctrine in most jurisdictions.
Let’s say I invent a set of amazing tires for Audi cars (they only fit on an Audi car), and I sell them for half the price of a set of official Audi tires. I brand these tires as “AmazingTires for Audi”, with a disclaimer that I am not Audi, but a third party.
In this scenario, you’re riding on the goodwill of the brand, and the brand owner might oppose. However logically I would assume something like this not to constitute infringement, as you are not actually damaging the brand (if the product is good) and there is no other way to describe your product without using the Audi brand name.
INSTAnt teleGRAM
Looks like a mashup of two words...
"Littergram invites people to share pictures of rubbish."
It's pretty clear that -gram here is used to signal that this is a picture sharing app.
If Instagram didn't exist it's unlikely Lucas would have called his app Littergram.
But yes, I agree, the similarity in app functionality suggests that the name derives/can be confused with Instagram as opposed to a telegram, and so there may well be merit in the C&D.
I think they put the wrong app name in there. Given that sentence, they are identical apps.
If you or I put up a banner "littergram kitchen" inside of our kitchen and no one knows about it but friends and residents.. there's no problem.
Hell if "littergram" becomes used by a few dozen people, no problem. Enter the same marketplace as "instagram" and voila, namespace collision. (Well almost, littergram != instagram but you see what I mean).
I wonder what the world would be like if copyrights used proper namespaces? Maybe we there would be a dearth of companies missing vowels in their title..
(b) trademarks are namespaced, both by business and geography. As a quick example, different Otto pizza chains ran peacefully in NYC and in Portland, ME. There only was an issue when they both tried to expand to Boston at the same time.
(c) missing vowels has nothing to do with collisions. I cannot create a company called flicker that hosts photos. I also cannot create a social network called facbook. Present or missing vowels do not make a difference. Missing vowels started with getting a web address, then became a fad.