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 ÂpinÂ.
Across the pond Pinterest sued ÂPintripsÂ- a company that runs a mobile app allows its users to save flights from travel sites by ÂpinningÂ 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 ÂpinÂ 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 Âit was impossible to disaggregateÂ survey respondents who were influenced by the PIntrips name alone from those who were thinking about a Âpin buttonÂ or Âpinning functionality.Â
Gilliam commented that the term ÂpinÂ is a verb that has a widely understood meaning, and Pintrips has a fair use right to use it. He added ÂPintrips 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.Â
Giulliam also threw out PinterestÂs claim of trademark dilution, he found that the website did not qualify as a Âfamous markÂ 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 ÂPinterest 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.Â
It was reported that Pintrips was initially supposed to be called ÂFlightraxÂ. The Pintrips name was later suggested by one of the siteÂs 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 PintripsÂ witnesses had offered Âcredible and detailedÂ 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 ÂThis ruling is based on PintripsÂ ability to convince the court that they hadnÂt heard of Pinterest in 2011, while we are disappointed in that conclusion, it doesnÂt have any implications for our marks today or the future.Â
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 ÂPinÂ or ÂPinterestÂ 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: Âwords like ÂpinÂ and ÂpinningÂ have become part of the internetÂs terminology, much like ÂtrashÂ and Âyou have mailÂ. He continued Âthis 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.Â
In the UK the start up Free118 were at the receiving end of PinterestÂs attention. Free118 does not use a variation of the p-word in its name rather it has formulated an action that involves the word ÂpinÂ- ÂpinmydealÂ.
The UK decision emphasises the fact that the issue with Pinterest claiming infringement over ÂPinmydealÂ is that the central word in question is just too common- just as common as ÂmyÂ and ÂdealÂ. 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 PinterestÂs EU-wide ÂPINÂ application and currently the parties are in a cooling-off period, which may lead to a settlement negotiation. He notes ÂIt is possible the opposing partiesÂ will be paid off so Pinterest will end up with a CTM (European) registered trade mark for ÂpinÂ.
He further comments: Âthis is the holy grain for companies like PinterestÂ he points out that in Court this is likely to be a Âsqueeze argumentÂ as ÂPinÂ is descriptive Â(at least in English)Â of pinning something to something, Âso if you try and enforce the registration it is invalid.Â. 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 ÂpinÂ family argument put forward by Pinterest. This means that Âanyone can use a ÂpinÂ mark provided that it is not graphically similar to PinterestÂs stylised/block and its corresponding ÂPin itÂ button. ÂOutside of the UK/English language countries there will still be arguments about how descriptive ÂpinÂ is in German/French etc., but it will certainly make life much more difficult for Pinterest in attempting to grab ÂpinÂ exclusively for themselves.Â