Kim & Chang obtained an important ruling on behalf of Instagram LLC ("Instagram") from the Patent Court, which held that a third party's trademark registration for  should be invalidated due to its similarity to Instagram's famous INSTAGRAM marks. The challenge spanned an opposition, invalidation, and an IPTAB appeal, and Kim & Chang successfully persuaded the court that it was proper to invalidate a third-party registration for free-riding on a famous mark where the registration only contained a portion of the famous mark, where the portion was also an independent trademark and was widely recognized as a reference to the famous mark.

A Korean individual filed an application for the mark  ("INSTA INSTA MODEL") on Feb. 24, 2016 in connection with advertising services, marketing services, model employment services etc. in Class 35. Instagram, LLC unsuccessfully opposed based on its prior application for INSTAGRAM (stylized) in Class 35, its prior INSTAGRAM registrations, and its registration for INSTA in Cl.9. In finding in favor of the applicant, KIPO held that INSTAGRAM and INSTA INSTA MODEL were dissimilar and that there was insufficient evidence that INSTA was a source identifier for INSTAGRAM. INSTA INSTA MODEL was subsequently registered as there is no procedure under Korean law to appeal opposition decisions.

To lay the groundwork to invalidate the INSTA INSTA MODEL registration at the Intellectual Property Trial and Appeal Board (IPTAB), Kim & Chang worked closely with the client to bolster Instagram's Korean trademark registrations for INSTAGRAM, INSTA, and INSTA in Korean characters. To further show the reputation of Instagram and to show that INSTA was indeed recognized by Korean consumers as a reference to Instagram, Kim & Chang also conducted a trademark survey for INSTAGRAM and INSTA in Korea that showed that Instagram was recognized by 99% of the Korean adult population and that INSTA was associated with Instagram. Kim & Chang also amassed a significant quantity of media and internet evidence that showed that the general Korean population used INSTA to refer to Instagram. Finally, the invalidation proceeding also had newly uncovered evidence that proved the applicant actually intended to use the INSTA INSTA MODEL to associate itself with Instagram, as the mark was used in an advertisement to recruit models for Instagram and sought prospective models' Instagram account names. Despite the submission of this extensive evidence, the IPTAB neither considered this evidence nor the applicant's bad faith, and instead decided that consumers would not associate INSTA INSTA MODEL with INSTAGRAM, that INSTAGRAM is a unitary term that is not separable into parts and INSTA is not understood as a reference to Instagram.

Instagram then appealed to the Patent Court, where Kim & Chang argued that (1) the INSTAGRAM mark was widely known around the world as of the application date, including in Korea, and was widely referred to by users as INSTA; (2) INSTA is a trademark of Instagram's and a distinct, widely understood reference to Instagram, and that the INSTA portion of the INSTAGRAM mark is separable and distinctive; and (3) the registrant was intentionally trying to free ride on the reputation and quality associated with the INSTAGRAM marks when he filed the application.

The court agreed and held that the registration should be invalidated in its entirety. The court acknowledged that the evidence submitted by Kim & Chang proved that INSTA was widely known as the short form of INSTAGRAM and that under the established Korean procedure of examining trademarks in separate parts in addition to as a whole, the INSTA portion of INSTAGRAM was separable from the rest of the mark. Accordingly, INSTA INSTA MODEL was determined to be similar to the INSTAGRAM marks.

The court also held that the registrant filed the subject mark in bad faith, in view of (1) the close relationship between some of the designated services, such as "marketing and advertising services, etc.," and the services for which Instagram's marks are used and widely promoted and advertised (i.e., social media services), and (2) the fact that the defendant was using the subject mark to refer to "a model on Instagram".

Finally, the court recognized that the INSTAGRAM mark was a famous source identifier for Instagram's social media services in Korea and abroad as of February 14, 2016 (the date the application for the subject mark was filed) based on its long period of use, and that this was abundantly clear from the evidence submitted in support.

As the registrant did not appeal the Patent Court's decision, the decision was final and the case remanded to the IPTAB for reconsideration in accordance with the decision. On remand, the IPTAB held that the applicant sought to free ride on the business reputation of Instagram and found that the MODEL portion of INSTA INSTA MODEL was non-distinctive for model recruitment services, and the remaining portion INSTA was confusingly similar to INSTAGRAM as INSTA is a commonly abbreviated name for INSTAGRAM.