In the world of trademarks, the success or failure of trademark infringement lawsuits are measured by the “likelihood of confusion” standard. Broadly speaking, this means that if consumers are likely to be confused (or, better yet, actually are confused) about the source of a particular good or service based on similarities between the competing trademarks of the two companies, then only one trademark should be allowed to exist and to serve its primary purpose as a ‘source identifier.’
Trademark law was created to protect consumers so that they could rely on trademarks (and service marks) as a shorthand way of identifying where their tennis shoes and cheeseburger’s originated. Thus, if a consumer’s athletic shoes bore the symbol of a ‘swoosh,’ then the consumer should be able to rely on them having come from Nike. Likewise, if a consumers cheeseburgers were served in a bag with ‘golden arches’ on it, then they should know they came from McDonald’s. One of the main problems with trademark law is that what may be confusing to some may not be confusing to all.
In one such instance, Pinterest Inc., the social media giant with the software application (or “app”) that allows users to “pin” favorite photographs, recipes and the like in order to share them with others, was so concerned about Pintrips Inc., a much smaller company that allows users to compare travel plans with one another, that it filed suit in late 2013 alleging trademark infringement by virtue of the similarities between the names “Pinterest” and “Pintrips.” Pinterest is seeking an injunction against Pintrips that would bar the company from using its own name or any other name derived from the word “pin” as a trademark in relation to any travel planning products or services.
Pinterest based its lawsuit on the priority of its use of the “Pinterest” mark and its portfolio of registered trademarks. Pinterest owns several trademark registrations in the U.S. for its word mark (USPTO TM Reg. No. 4145087) and design mark (USPTO TM Reg. No. 4685112) as well as registrations for the word “pin” in International Classes 009, 042, and 045 for online bookmarking computer software (among other things). On the other hand, Pintrips has filed a registration application for its word mark (USPTO Ser. No. 85793784) in International Class 035 and 039 for advertising and travel planning services. Not surprisingly, Pinterest has filed opposition to the pending Pintrips registration.
In late August, the lawsuit went to trial before U.S. District Judge Haywood S. Gilliam in the Northern District of California. At trial, Pinterest argued that the “Pintrips” mark was too similar to the “Pinterest” mark not to cause confusion while Pintrips argued that the use of the word “pin” within the “Pinterest” trademarks was too generic to warrant protection. As such, Pintrips argued the “Pinterest” trademarks should be stripped of their protection.
On October 21, Judge Gilliam denied down Pinterest’s claim that Pintrips’ use of the word “pin” infringed its registered mark for “pin” and unregistered mark for “pin it,” saying that consumer confusion was not likely and that Pintrips’ use of the word “pin” was protected under the doctrine of “fair use.”
Why It Matters. This case demonstrates the importance of a comprehensive trademark search prior to registration. If, as Pintrips claimed, it was acting in good faith when it selected the name for its company and app, then it easily could have considered the potential infringement of the name when compared to Pinterest prior to formation and adoption, effectively avoiding a costly legal process by simply rebranding at the outset. Of course, if the opposite was true and Pinterest had been correct, then the selection of the obviously similar name was intentional and was meant, if not to create confusion, then at least to borrow some of the popularity and name recognition of Pinterest. Either way, companies hoping to avoid problems such as this (and the resulting costly litigation) would be well advised to perform this essential step before establishing a new trademark.