Most readers will know that Pinterest Inc. (“Pinterest”) owns a social media website that allows users to post content by creating pins on their virtual “pinboard” in subject matters such as fashion, food, recipes, travel and home decor. Pinterest maintains trademark registrations for the marks “PINTEREST” and for “PIN” and has used these marks since March of 2010. Pinterest sued Pintrips Inc. (“Pintrips”) for trademark infringement, trademark dilution and other related causes of action. Pintrips uses the terms Pintrips and Pin in connection with its online services for travel planning. Users of Pintrips’ website have a “tripboard” where they can pin agendas for their travels and monitor price information regarding flights. Pintrips possesses common law rights and does not own any federal trademark registrations.
Pintrips filed a trademark application for PINTRIPS at the United States Patent & Trademark Office (USPTO). The matter was been stayed since Pinterest filed an action in the United States District Court Of Northern California for trademark infringement. The Court addressed the following matters first: (1) whether the common law trademark PINTRIPS infringes the registered mark PINTEREST; and whether the term Pin infringes Pinterest’s registered mark PIN and common law mark PIN IT. To make a determination the Court had to first assess the strength of Pinterest’s marks.
Not all trademarks are given the same scope of protection. The amount of protection turns on the type of mark in question. Trademarks fall into five categories. See our webpage entitled, The Importance Of Selecting A Distinctive And Inventive Mark for more information on the five categories of marks. The two strongest groups of trademarks are fanciful and arbitrary marks. These types of trademarks receive the broadest scope of protection. Suggestive marks are considered distinctive marks but receive a lesser amount of protection. Lastly, descriptive marks are considered to be weak trademarks and receive a very narrow scope of protection until they develop secondary meaning.
The Court determined that the mark PINTEREST was suggestive and therefore did not need to prove secondary meaning. In addition, it was found that it was a commercially strong mark because there were not similar trademarks in a crowded marketplace. Next the Court addressed the relatedness of the services. Pintrips website allows users to monitor airline prices and to collect or save flight itineraries to one location. These matters stay private unless the user invites another user to view its collected information.
In contrast, Pinterest is a social media website where users share all their information in connection with their interests. Although users of Pinterest share information about their travel interests, this is just one subject of multiple interests that are shared by users of the PINTEREST website. The primary objective for users of Pintrips is to monitor airline prices and to book travel. The main function on Pinterest’s website is to share photos, articles and information in regard to a subject of interest. The Court found that there was a lack of relatedness between the services and this weighed against finding a likelihood of confusion between the sources of the marks.
In examining the two companies’ marketing channels, Pinterest argued that they both advertised online through Facebook and Twitter, in addition to word of mouth. The Court was not persuaded by this argument because it reasoned that it should not be given considerable weight because thousands of companies utilize the same marketing channels. The marketing channels review weighs against finding confusion in the marketplace. In view of all the evidence presented, the Court found the factors weighed against finding infringement of Pinterest’s trademarks. With regard to the claim of infringement of Pinterest’s mark PIN, the Court held that Pintrips’ use of the term “pin” falls under the fair use defense. Pintrips uses the word “pin” to describe a feature of its website (the ordinary act of pinning) and not as a trademark.
In the end, the differences between the companies’ services strongly weighed against finding a likelihood of confusion. One’s primary purpose is a social networking site while the other’s significant feature is travel booking. It is important to keep in mind the factor test utilized in your jurisdiction. The Ninth Circuit utilizes the eight-factor test of AMF Inc. v. Sleekcraft Boats and this test varies somewhat from the factor tests in other jurisdicitions. Always review the standard that will be applied in your jurisdiction before determining whether to file a trademark action.