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Ages before there was an Internet, and certainly long before Pinterest ever came onto the scene, folks were pinning things — to bulletin boards, to computer dashboards and docks. But the folks at Pinterest believe they have an exclusive trademark of the online use of phrases like “pin it.” Unfortunately for them, a federal judge disagrees.
Back in 2013, Pinterest filed a trademark infringement lawsuit [PDF] against travel site Pintrips.com, alleging that the brand “causes confusion among consumer[s] and implies a connection, affiliation or sponsorship that does not exist.”
“Pinterest pioneered the use of PIN-formative terms in the context of social media and bookmarking,” reads the 2013 complaint. “The public associates these terms with Pinterest, and they have become famous in relation to Pinterest’s goods and services.”
Pinterest argues that when Pintrips launched in 2011, it “should have adopted its own unique name,” but instead chose to go with something “similar in appearance, sound, and commercial impression” to Pinterest.
One thing that really seemed to have burned Pinterest’s butter was Pinstrip’s use of a “Pin” button:
When Pintrips attempted to trademark its name in 2012, Pinterest objected. That filing has been on hold pending the outcome of the Pinterest lawsuit.
As the judge explains in this week’s ruling [PDF], there are various categories of trademark, each with its own general degree of protection.
Trademarks deemed “arbitrary” or “fanciful” often receive the highest level of protection because consumers may be confused into thinking that two companies named “GuffleBoon” — a name that in no way indicates what type of product or service is being sold — are related.
Lower down on the trademark protection totem pole are “suggestive” trademarks — names that don’t explicitly state what a company does, but give a good enough idea for your typical consumer to suss it out. So you may not know for sure that “GufflePrint” is an on-demand printing company, but it wouldn’t take too much imagination to make that leap.
Pinterest argued that its trademark belonged in the arbitrary category, but the judge concluded that it is merely suggestive.
“[W]hile understanding the meaning of the ‘Pinterest’ mark requires the public to employ the multistage reasoning that differentiates suggestive marks from those that are merely descriptive, the combination of ‘pin’ and ‘interest’ cannot reasonably be said to be arbitrary or fanciful,” explains the court. “The Pinterest mark is a textbook example of a suggestive mark that ‘subtly connote[s] something’ about the company’s services, in that it conveys to users that the website allows them to pin their interests.”
But at the same time, the judge noted that the Pinterest trademark is strong — both in terms of consumer identity and because there aren’t many other similar-sounding brands out there. That was a point in Pinterest’s favor.
Pinterest also contended that Pintrips causes confusion because both sites offer “services related to the travel industry generally” and “collaborative products that allow consumers to plan travel using the Internet.”
But the court disagreed that about the similarities of the way the two sites are used with regard to travel booking. Sure, people use Pinterest to research travel destinations based on other users’ pinned images and notes, but that’s not the same as actually researching the logistics of travel.
“Pintrips does not provide users the opportunity to research their travel destinations, identify sights to see while traveling, or gather ideas for new travel destinations from other users, given that all Pintrips Tripboards are, by default, private,” writes the judge, who notes that in order for a Pintrips user to partake in anything resembling Pinterest’s “social media” aspect is to individually invite other users to access a particular trip.
Beyond that, explains the court, “Travel is just one of the dozens and dozens of exceptionally broad subject-matter categories about which Pinterest users choose to pin… While Pinterest users undoubtedly use the service to research their travel destinations (as well as hundreds of other subjects), that fact does not render Pinterest’s social media service similar to Pintrips’ airline itinerary-tracking tool.”
During the trial, Pinterest said that it is considering someday expanding the site’s capability to facilitate actual travel booking, but the judge says the fact this may happen “at some unknown point in the future is too speculative and indefinite to weigh in favor of” Pinterest’s trademark infringement claim.
While the court acknowledged there is at least some visual similarity in the words “Pinterest” and “Pintrips,” and that they could be pronounced in a way that makes them sound alike (especially when Pinterest is pronounced “pin-trist”), the judge found it was unlikely that consumers would be confused by the meanings of the two marks.
One place where Pinterest came up very short was in its attempt to show actual consumer confusion between the brands. As evidence, it only produced a single customer e-mail written to Pintrips from a Pinterest user who had questions about her username and password.
“One potentially confused consumer, standing alone, is not sufficient evidence of actual confusion,” writes the judge. “Moreover, even this e-mail does not suggest that the consumer’s confusion affected her purchasing decision — i.e., that she visited or used the Pintrips website mistakenly believing it was the Pinterest website.”
The judge also blasted two surveys submitted by Pinterest as evidence of possible confusion, saying they each had “fatal defects” in their designs that “render their results meaningless to the resolution of this lawsuit.”
Pintrips, before its launch, was originally dubbed “Flightrax.” The when, how, and why of the name change is also at the core of the judge’s ruling.
Pinterest believes that the Pintrips name was a deliberate attempt to ride the coattails of the slightly older site, even though it was an invite-only website with a mere 500,000 unique monthly visitors at the time Pintrips was created.
At trial, those involved in the launch of Pintrips testified that the name came up during a brainstorming session in which one staffer was describing the way you use the site, saying “you pin this over here, you pin this trip to this board over here, and then you pin this trip to this board over here,” leading another person in the room to declare “That’s what it is. Pinning trips. ‘Pintrips.'”
The Pintrips folks claim they did not know of the Pinterest name until several days later; a claim that Pinterest disputes, noting that the URL for Pintrips wasn’t registered until after one staffer e-mailed the other in June 2011 pointing out the existence of Pinterest.
In the end, the judge found Pintrips’ timeline and testimony credible and said that “No evidence was introduced at trial that suggested that the Pintrips mark was selected to take advantage of Pinterest’s brand recognition. In fact, no evidence suggests that Pinterest had substantial brand recognition as of June 2011 that Pintrips would want to appropriate.”
The court also held that while Pinterest may hold a trademark on a very specific use of the term “Pin,” it doesn’t apply to every use of “pinning” something online. If it did, concluded the judge, that would me a step down the slippery slope toward allowing trademark protection for all generic words.
In this case Pintrips isn’t using “pin” as a commercial mark in the way the Pinterest does. It’s merely describing an action of how one uses the Pintrips service. Furthermore, experts demonstrated that “pinning” and “pin” have been used as generic terms in computer interfaces for decades, much like other generics, including “file” and “folder.”
Pinterest tried to argue that Pintrips is using the word “pin” so that users associate that action with the Pintrips brand, but the court notes that numerous other computer, software, and social media companies — including Microsoft and Facebook — have used the term “pin,” even though it in no way relates to, or creates an association with, their brands.
“Facebook, Google, and Windows all permit users to pin virtual objects, and because they all use the same word to identify the pinning operation, that word could not plausibly serve to identify their unique brand,” writes the judge.
Beyond that, while Pinterest buttons can appear on any site that wants to encourage its users to share its content, the only way a Pintrips button will appear on a third-party website is for a user to have created a Pintrips account and downloaded the Pintrips browser extension.
Even though Pinterest has spent two years and heaven knows how much money fighting this war, the website is now trying to downplay the importance of the court’s decision.
“This ruling is based on Pintrips’ ability to convince the court they hadn’t heard of Pinterest in 2011,” a rep for the company tells Ars Technica. “While we’re disappointed in that conclusion, it doesn’t have any implications for our marks today or the future.”
by Chris Morran via Consumerist
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