In a recent federal district court case in the Northern District of California (Case No. 13-cv-04608-HSG), Pintrips Inc., a website-based travel planning service, effectively pinned to the mat the trademark claims brought against it by Pinterest Inc., the operator of the popular image-sharing website. Following a bench trial, the Court rejected Pinterest’s claims of trademark infringement and dilution, as well as other related state and federal causes of action, which were based on Pinterest’s rights to its “Pinterest,” “Pin” and “Pin It” word marks. The case is of interest to industry observers and participants alike for a number of reasons. In the course of providing practical insight into the judicial thought processes at play in a point-by-point application of the eight “Sleekcraft” factors (from the 9th Circuit’s 1979 decision in AMF Inc. vs Sleekcraft Boats) that can be considered when determining if a mark has been infringed, the case also yielded some insight on the impact of timing in regard to a defendant’s knowledge of the plaintiff’s mark; the potential of making a consumer jump through some hoops; and on the very nature of a “social media service.”
Pinning One’s Case on a Syllable and a Mark
In Pinterest, Inc. v. Pintrips, Inc., the Court found that Pintrips’ use of its “Pintrips” mark did not infringe Pinterest’s rights to its registered “Pinterest” mark. The Court reached this decision through the consideration of the eight “Sleekcraft” factors, determining that the totality of those factors weighed against a finding of consumer confusion. In particular, the Court made the following findings:
- The “Pinterest” Mark is Suggestive. The Court found that Pinterest mark was not arbitrary or fanciful, but rather was a “textbook” example of a suggestive mark in that it subtly connotes something about the company’s services (i.e. that the website permits users to pin their interests). However, the Court also found the mark to be commercially strong, and therefore that this factor weighed slightly in Pinterest’s favor.
- The Proximity of the Parties Good and Services. In analyzing this factor, the Court found that it weighed against a likelihood of consumer confusion largely because the Pintrips service lacked “social media” functions. In doing so, the Court distinguished the social media aspects of Pinterest’s “social media service”—in which users can share photos, articles and other information about their interests on their Pinboards, which are, by default, viewable by Pinterest’s millions of other monthly users—with the Pintrip’s service in which the users’ “Tripboards” are, by default, private (although there is a function in the Pintrip’s service which allows a user to individually invite other users to see his or her Tripboard).As it becomes more and more common for online services to allow some level of sharing of information among users, it will be interesting to see if other courts cite this opinion in future cases to establish what services are and are not “social media” services or competing services for the purposes of consumer confusion analysis in trademark-related disputes. The ruling suggests that an important characteristic of a social media service is that the service, by default, provides for free sharing, or at least viewing of, information of a particular user with a very large group of other users.
- Similarity of the Marks. The Court reasoned here that the similarities in sight, sound and meaning between “Pinterest” and “Pintrips” weighed slightly in favor of consumer confusion.
- Evidence of Actual Confusion. The Court determined here that there was no persuasive evidence presented of actual confusion between the Pinterest and Pintrips marks, and also that due to Pintrips’ small user-base, evidence of such confusion was unlikely available. As a result, the Court provided neutral treatment to this factor.
- Marketing Channels. The Court regarded this factor as neutral as well, finding that the Internet and “word of mouth” marketing channels used by Pintrips are common marketing channels shared by numerous companies, and under Ninth Circuit precedent such factor thus merited little weight in the analysis.
- The Type of Goods and the Degree of Care Exercised by the Purchasers. Here the Court found that this factor was either neutral or weighted slightly against a finding of confusion. It is noteworthy that the Court cited the fact that a user was required to not only create an account to use the Pintrips service, but also had to click through several web pages describing the service, as well as download and install a special browser extension to use the service. The implication is that, in taking actions such as those (even if the service is free), a user is presumed to have exercised a relatively higher degree of care in selecting the service, and accordingly, the likelihood of a consumer confusing the Pintrips service with the Pinterest service in the case was decreased.
- Pintrips’ Intent in Selecting Its Mark. The Court’s analysis here, which was very fact-intensive and based largely on the credibility of testimony offered by Pintrips’ founders (which was credited by the Court), resulted in a neutral finding on this factor, on an unusual set of facts. In particular, the Court balanced the fact that Pintrips came up with its name without knowledge of the Pinterest mark, against the fact that Pintrips did learn of the Pinterest mark later the very same day that one of the Pintrips’ founders came up with the Pintrips name and months before it began using the Pintrips mark in commerce. The Court’s logic here seems to suggest that a party’s intent at the very moment of selecting the mark should be the focus of the inquiry, as even if a party is informed of the existence of the senior mark later that same day and nevertheless thereafter proceeds to register its domain name with knowledge of the senior mark (as was the sequence of events credited here by the Court—albeit without any evidence found by the Court to show that the mark was selected to take advantage of the senior mark’s brand recognition), then this Sleekcraft factor will be regarded as “indeterminate.” It will be interesting to see how this issue is treated by the Ninth Circuit should that issue reach it on appeal.
- Likelihood of Expansion of the Product Line. The Court found that this factor weighed heavily in favor of Pintrips, since Pinterest failed to present any concrete plans that it was developing a travel booking function.
Taking All “Factors” into Account
In the final analysis, the Court decided that the factors in Pintrips’ favor (i.e. the dissimilarity of the parties’ respective services and the absence of a likelihood that Pinterest would expand into the travel booking services market) outweighed the factors that were in Pinterest’s favor (i.e. the strength of the Pinterest mark and the similarity of the marks). The Court found that Pinterest failed to meet its burden of showing a likelihood of consumer confusion as to the Pinterest and Pintrips marks.
Separately, the Court also found that Pintrips use of the word “pin” on the Pintrips website’s pin button (and related content) did not infringe Pinterest’s “Pin” and “Pin it” marks, and that such use by Pintrips was “fair use” under the Lanham Act.
Specifically, the Court found that Pintrips used the word “pin” to describe a feature of its service, not as a mark. Here the Court relied on substantial evidence indicating that the word “pin” was used to describe “the common act of pinning” and that the terms “pin” and “pinning” have concrete and well-known meanings in both the computing field in general and in the social media field in particular, and that the term “pin” had been used by others in many instances well before the advent of the Pinterest service. For example, the Court referred to books published as far back as 1994 stating that messages in computer bulletin boards were left “pinned up” for future reference, and that many large software, internet and social media companies (such as Microsoft and Facebook) have used the word “pin” for this common and well known purpose for quite some time to describe this same functionality.
In what is arguably dicta, the Court went so far as to reject the notion that the use of the word “pin”—even if used as a noun to refer to the entire piece of content pinned, rather than as a verb to describe the act of pinning—could be anything but a purely descriptive term, at least based on the evidence presented. Indeed, the Court suggested that the transition of the word “pin” from a verb to a noun might merely be the result of the natural course of linguistic development, rather than due to any novel use of the term by Pinterest.
The Court also went on to determine that on the record presented, Pintrips use of the word “pin” was done in good faith.
Finally, the Court rejected Pinterest’s trademark dilution claim, determining that none of Pinterest’s marks were sufficiently famous at the time Pintrips first began use of its mark in commerce to substantiate such a claim.
Of the many lessons that can be learned from this case, one of the most important is that, when selecting potential marks, one should always consider whether a company’s proposed mark is descriptive of any common computing, social media or other functions. If it could be, one should take special care to assess the risks and benefits that accompany the selection. As demonstrated by Pinterest, Inc. v. Pintrips, Inc., the potential downside of such a mark can be substantial difficulty or inability to enforce that mark when it is used by others in descriptive ways. When it comes to something as important as trademark disputes over company branding, no business owner wants to enter the courtroom already partially pinned down.