Last October, Pinterest,
the popular social networking platform sued a travel planning service called Pintrips in California District Court for
trademark infringement, false designation of origin, unfair competition and
dilution of their “PIN” family of trademarks.
For those unfamiliar with Pinterest, it is a website whereby
users (“Pinners”) collect images, recipes and other visual content and “pin” it
to their user page (“board”). Much like the Facebook “like” button or Google’s
“+1”, Pinterest has a “Pin it” social plug-in that third party sites integrate
into their web pages. This is the vehicle by which Pinners add to their boards;
by pinning images found on other websites.
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| Photo by Norebbo |
By its own description,
Pintrips offers a service where you can “…shop for flights on your favorite
sites, pin the options you care about, and see them on a personalized
dashboard.” It markets itself as a travel facilitation application rather than
as a social networking platform.
Pinterest’s claims are based on the Lanham Act and the California
Business and Professional Code. Among other things, Pinterest claims that
it had acquired rights in the “PIN-formative” trademarks before the Defendant
began using its marks, and that the Defendant’s marks are confusingly similar
and are likely to deceive the public into thinking that they are affiliated
with the Pinterest brand. Pinterest’s claim for dilution is based on its
assertion that its marks are famous, and have been so since before the
Defendant started using its marks. They argue that Pintrips knowingly branded
itself so as to capitalize on Pinterest’s goodwill.
Pinterest asks for interlocutory and final injunctive
relief, delivery up and destruction, disgorgement of profits and compensatory
damages.
While Pinterest acknowledges that the scope of its marks far
exceed the travel industry, the Complaint alleges that the Pinterest travel
section is one of the most popular parts of the website with more than 600
million total pins.
On January 6, Pintrips fired back with a motion to dismiss
the Complaint. Pintrips based its motion
on the following grounds:
- That Pinterest cannot assert ownership over the PIN prefix;
- Based on this lack of ownership over PIN, the State law claims must fail; and
- Even if the State law claims survive, the Court should decline jurisdiction in favour of the State Courts.
Setting the jurisdictional issues aside, Pintrips is arguing
that “pin” is a generic term that describes a function. They argue that
Pinterest has no trademark registrations for PIN and should not be able to
obtain one given the market restricting effect this would have on a number of
different web-based businesses.
This is a key element of Pintrips’ argument because
Pinterest will doubtless argue on the motion that pin has acquired secondary
meaning associating that prefix with its brand; and this regardless of what
comes after that prefix. Oddly, Pinterest failed to allege that its family of
PIN-formative trademarks are so strong that PIN has acquired secondary meaning.
Pintrips has cited law to the effect that regardless of how
strongly the public may associate a generic term with a given brand, trademark
status cannot be granted in the generic term. This strong consumer association
with a generic term is known as de facto secondary
meaning and has been rejected by courts as sufficient grounds to claim
ownership over a generic term like “PC” or “MP3”.
Pintrips provided a number of examples where companies use
pin as a generic term in association with “software applications, online maps,
and websites”. Among those applications mentioned were Microsoft Windows,
Facebook and Google Maps.
It would appear that the law backs
up Pintrips’ argument. At the hearing of the motion (Scheduled for February 13,
2014), it will be essential for Pintrips’ counsel to drive home the point that
“pin” is a commonly used term to denote a specific type of action in the online
environment, namely marking a specific thing or place on a webpage (Google
Maps), or the act of posting content from a third-party website to a user page
of some sort (Facebook and Pinterest).
It may be tricky to convince a
judge, particularly one who is not in the habit of pinning things online, that
pin is in fact a generic action in the online environment. It may be helpful
for Pintrips to liken the action of pinning to the action of posting. Posting
is a familiar action online and can relate to any number of things, some of
which could also be described with the term pin.
If I were arguing the motion on
Pintrips’ behalf, I would offer the following two analogies:
- Whether I say “he knocked the ball out of the park” or “he hit the ball out of the park”, without any other information, the mental image one forms in their mind is that of a batter making contact with the baseball hard enough to propel it out of the field.
- Whether I say “he jumped off the building” or “he leapt off the building”, without any other information, the mental image one forms in their mind is the same.
In the same way, posting a photo
or pinning a photo amounts to the same thing. Both are generic terms denoting a
single action.
Upon a search of the USPTO
trademark database, it appears that Pinterest has applied for PIN (Serial no.
85698998) in association with a wide range of goods and services. The
opposition period has expired but the trademark has not been registered. Pinterest
also claims registrations in several other jurisdictions.
Pinterest’s claim is not based on a trademark
registration, but on Common Law rights. Much of their argument turns on the
fact that a great deal of its popularity comes from its third party plug-in
buttons; and that the Pintrips button (that may be alongside the “Pin it”)
button causes confusion and dilutes Pinterest’s brand.
The fact that these buttons may appear side by side is
a functional reality. Websites that use these third-party plug-ins tend to put
them all in the same place on the page. From a visual inspection of these
marks, it would appear difficult to confuse them. Apart from the word pin, the
marks are completely different. The “Pin it” button has red text with a stylized
font. The Pintrips button is in a plane blue font. The Pintrips mark also contains
a visual depiction of a sewing pin. In the “Pin it” button, the word pin is a
prefix. In the Pintrips button, the word pin stands alone and comes after the
image of the sewing pin.
Pinterest argues that in addition to appearance, the
confusing trademark sounds the same or confusingly similar. Depending on how
one pronounces the word “interest” (in two syllables or three), this may be
true. But here, Pinterest can only be comparing its PINTEREST mark with
PINTRIPS; not their respective third-party plug-in buttons depicted above. This
is not self-evident given the drafting of the Complaint.
While this is only a partial analysis, it may be for
naught if the Judge agrees with Pintrips on their motion and dismisses the
complaint before arguments for confusion are ever made. Suffice it to say that
Pinterest will be fighting an up-hill battle on this motion, and if they
succeed, perhaps in the ensuing jury trial.
This is a typical David vs. Goliath situation. The fame
of the Pinterest trademarks is beyond question. However, as Pintrips argues, no
degree of notoriety should give anyone a monopoly on a technical or generic
term.
Post Script:
In a somewhat related turn of
events, last November, the European Commission’s Office for Harmonization in
the Internal Market, Trade Marks and Designs Division rejected
Pinterest’s opposition to a registration for PINTEREST by a news aggregator website and corporation called
Premium Interest Ltd. This means that if Pinterest wants to operate officially
in Europe, it will have to either change its name or buy a license from the
Registrant.
