Popular social networking site Pinterest has lost two separate trademark cases- on in the US and the second in the UK. Social media giant Pinterest has been involved in trademark spats with a number of companies and have attempted to block their use of the word ‘pin’.
Across the pond Pinterest sued ‘Pintrips’- a company that runs a mobile app allows its users to save flights from travel sites by “pinning” your choices on to a digital personal trio board. In 2013 Pinterest initiated legal proceedings against Pintrips for alleged misuse of its trademark.
Pinterest as a result demanded that the U.S. District Court for the Northern District of California force Pintrips to change its name and cease the use of “pin” trademarks. Pinterest also demanded an unspecified amount of damages plus interest.
US Distruct Judge Haywood Gilliam found in Pintrips favour. He dismissed two surveys that Pinterest had commissioned. The Surveys purported to show consumer confusion. The first survey Gilliam found that “it was impossible to disaggregate” survey respondents who were influenced by the PIntrips name alone from those who were thinking about a “pin button” or “pinning functionality.”
Gilliam commented that the term “pin” is a verb that has a widely understood meaning, and Pintrips has a fair use right to use it. He added “Pintrips uses the term pin in the exact same way as Microsoft, Facebook, and the many other companies that have come before it: as a verb for attaching one virtual object to another.”
Giulliam also threw out Pinterest’s claim of trademark dilution, he found that the website did not qualify as a “famous mark” in 2011 and nor even in 2012 when it had a million users.
Gilliam pointed out that the two companies are in completely different businesses. He wrote “Pinterest has no travel booking function; is not working on a travel booking function; and has no concrete plan to begin working in a travel booking function in the future.”
It was reported that Pintrips was initially supposed to be called “Flightrax”. The Pintrips name was later suggested by one of the site’s team members, who did not know what Pinterest was at the time. At this time, Pinterest was still an invitation only site.
Whilst Gilliam acknowledged in the decision that the names look and sound similar, the judge found that Pintrips’ witnesses had offered “credible and detailed” accounts regarding the three day brainstorming workshop that resulted in the name for the company in June 2011, this was before Pinterest was the widely known company that it is today.
A Pinterest spokesperson commented via e-mail today “This ruling is based on Pintrips’ ability to convince the court that they hadn’t heard of Pinterest in 2011, while we are disappointed in that conclusion, it doesn’t have any implications for our marks today or the future.”
Pinterest have set out guidelines that encourage developers who are creating an app to be used along with Pinterest to use a distinctive name. It is acceptable to state that the product is to be used with Pinterest, but companies need to use a distinct brand for their app or product. Pinterest guidelines further state that companies or a brand must not use ‘Pin’ or ‘Pinterest’ in their own name. Further they should not register a domain name that contains those words and other misspellings or alterations with similar variations on Pinterest.
The lawyer for Pintrips- Edward Colbert commented: “words like ‘pin’ and ‘pinning’ have become part of the internet’s terminology, much like ‘trash’ and ‘you have mail’. He continued “this case confirms that any company may use those words for their ordinary meaning and prevents a large company with significant assets from trying to seize control of a commonly used word that is part of our everyday culture.”
In the UK the start up Free118 were at the receiving end of Pinterest’s attention. Free118 does not use a variation of the p-word in its name; rather it has formulated an action that involves the word ‘pin’- ‘pinmydeal’.
The UK decision emphasises the fact that the issue with Pinterest claiming infringement over “Pinmydeal” is that the central word in question is just too common- just as common as “my” and “deal”. Thus it was determined that the word is too generic to be trademarks- the decision was much the same as that made in the US.
The patent and trademark attorney- Kevin Parnham who represented Free118 commented that some organisations in Germany have opposed Pinterest’s EU-wide “PIN” application and currently the parties are in a cooling-off period, which may lead to a settlement negotiation. He notes “It is possible the opposing parties’ will be paid off so Pinterest will end up with a CTM (European) registered trade mark for ‘pin’.
He further comments: “this is the holy grain for companies like Pinterest” he points out that in Court this is likely to be a “squeeze argument” as ‘Pin’ is descriptive “(at least in English)” of pinning something to something, “so if you try and enforce the registration it is invalid.”. This however will mean that Pinterest will have to fight this point in each national court.
He comments that his client Free118 has just won a case in the UK, where the tribunal ignored the ‘pin’ family argument put forward by Pinterest. This means that “anyone can use a ‘pin’ mark provided that it is not graphically similar to Pinterest’s stylised/block and its corresponding “Pin it” button. “Outside of the UK/English language countries there will still be arguments about how descriptive ‘pin’ is in German/French etc., but it will certainly make life much more difficult for Pinterest in attempting to grab ‘pin’ exclusively for themselves.”