04 November, 2015
Pinterest is going through a hard time losing two back to back trademark suits, one in the UK and the other in the USA. The social media company that allows users to display or “pin” linked pictures on boards and create online scrapbooks that are shareable with others had alleged that its mark ‘pin’ has been infringed. The cases are discussed in greater detail hereunder:
USA
Pinterest in Pinterest Inc. vs Pintrips Inc. [1] asserts that Pintrips, a personal trip planning start-up infringes its word marks “Pinterest,” “Pin,” and “Pin It” as well as alleged for trademark dilution. Pinterest argues that the Pinterest and Pintrips, both companies offer “services related to the travel industry generally” and “collaborative products that allow consumers to plan travel using the Internet.” [2]
Further, it was stated that the names “Pinterest” and “Pintrips” are confusingly similar. To test ‘likelihood of confusion’ doctrine, the courts compared the marks in terms of their ‘sight, sound and meaning’ as they appear in the marketplace.
The California Federal Court held that use of “pin” is the only common element between the marks. When viewed as a whole, the meanings of these made-up words do not support a finding of likelihood of consumer confusion. The contention made by Pintrips that usage of the word ‘pin’ qualified as fair use under the Lanham Act and falls in line with its long-time use in the computer lexicon was upheld by the Court. It was stated that Pintrips had established the necessary grounds for ‘fair use’ that is – use of the word ‘pin’ to describe a feature of the service, not as a mark. Secondly, it was held that Pintrips is using it in good faith and not intending to capitalize on Pinterest’s good will. It was articulated further that the largest and most successful software and Internet companies such as Google and Microsoft have, for over a decade, used the word pin for this common and well-known purpose, hence deciding in favour of Pintrips. With regard to trademark dilution, the Court pronounced that since Pinterest could not established that its marks were famous by the time Pintrips first made use of its marks in commerce, which is one of the main grounds for dilution, the said claims were rejected.
UK
Comprising of similar facts, a location based mobile directory Free118 in the UK moved the Court against the right to use the phrase “pinmydeal” for one of the central actions of its service. Where it was held that the word “pin” is simply too generic to be trademarked and protected for the use of Pinterest alone. The Court stated that the mark is just too common, just as common, as “my” and “deal”. In addition, it was elucidated that average consumer normally perceives a mark as a whole and does not proceed to analyze its various details. The same case also explains that the visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks, bearing in mind their distinctive and dominant components.[3]
[1] Case No. 13-cv-04608-HSG, Available at: http://techcrunch.com/2015/10/26/pinterest-loses-pin-trademark-battles-in-us-and-uk/ (Last viewed on 29 October 2015).
[2] Ibid.
[3] Consolidated Oppositions Nos. 402595 AND 403527 by Pinterest Inc., Available at: http://techcrunch.com/2015/10/26/pinterest-loses-pin-trademark-battles-in-us-and-uk/ (Last viewed on 29 October 2015).
For further information, please contact:
Shristi Bansal, LexOrbis
mail@lexorbis.com
