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.