Pinterest Inc. v. Pintrips Inc.
93 Fed. R. Serv. 1010, 15 F. Supp. 3d 992, 109 U.S.P.Q. 2d (BNA) 2044 (2014)
Rule of Law:
A court generally cannot determine whether a trademark is generic and therefore unprotectable at the motion to dismiss stage, as such a determination requires a fact-specific inquiry inappropriate for resolution based solely on the pleadings.
Facts:
- Pinterest, an entity, was founded in early 2010 to provide online services through its website, www.pinterest.com.
- Pinterest’s web-based platform allows users to accumulate images and other content, which the user organizes into themed “boards,” and each piece of content posted is known as a “pin.”
- The “Pin It” button, appearing on Pinterest and hundreds of thousands of other websites, enables Pinterest users to add content directly to their own Pinterest boards from elsewhere on the internet.
- Pintrips Inc., an entity, was founded in August 2011 to provide online services through its website, www.pintrips.com, as a “personal travel planning dashboard.”
- Pintrips employs a “pin” button to enable its users to bookmark content pertaining to flights and travel.
- Pinterest claims to have pioneered the use of “pin-formative” terms in the context of social media and online bookmarking, with the public associating these terms with Pinterest.
- Pinterest holds a registered federal trademark for the mark “Pinterest” and avers common-law rights in the terms “Pinterest,” “pin,” “pin it,” and the “pin-” prefix as applied to social media bookmarking services, which it claims precede Pintrips’ first use of similar marks.
Procedural Posture:
- Pinterest Inc. filed a complaint against Pintrips Inc. in the United States District Court for the Northern District of California, asserting five claims for relief including trademark infringement, false designation of origin, trademark dilution, and unfair competition.
- Pintrips Inc. filed a motion to dismiss the complaint in its entirety, arguing that Pinterest Inc. had failed to state a claim upon which relief could be granted, contending primarily that the term “pin” is generic and therefore not entitled to trademark protection.
- Pintrips Inc. submitted a formal request for judicial notice of thirty-three exhibits, including official USPTO records and print-outs/screenshots of publicly available websites, attempting to demonstrate that the mark “pin” is generic.
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Issue:
Does a court, when considering a motion to dismiss, determine whether a trademark is generic and thus unprotectable, given that genericness is a question of fact?
Opinions:
Majority - Richard Seeborg
No, a court generally does not determine whether a trademark is generic and therefore unprotectable at the motion to dismiss stage, because such a determination is a fact-specific inquiry inappropriate for resolution based solely on the pleadings. The court found that whether a mark is generic is a question of fact that requires assessing whether consumers understand the word to refer only to a particular producer’s goods or to the goods themselves, a process that typically involves considering competing evidence and is thus unsuitable for a motion to dismiss. While some courts have decided fact-specific issues at the pleading stage, they generally do so only where the complaint completely fails to state a plausible basis for trademark protection. Pinterest’s complaint plausibly identified a theory under which the 'pin' mark could be entitled to trademark protection, either as a suggestive mark or a descriptive mark that has acquired distinctiveness through secondary meaning, and sufficiently alleged priority of use. Furthermore, the court denied Pintrips’ request for judicial notice of extrinsic documents to demonstrate genericness, affirming that such facts are disputed and thus improper for judicial notice or consideration at this stage. Finally, the court noted that Pintrips’ motion failed to address that all five of Pinterest’s claims also proceeded under the theory that Pintrips’ use of the 'Pintrips' mark was impermissible in light of Pinterest’s ownership of its federally registered 'Pinterest' mark, meaning the motion could not suffice to dismiss any claim even if 'pin' were deemed unprotectable.
Analysis:
This case reinforces a critical procedural limitation on motions to dismiss in trademark litigation, particularly concerning the issue of genericness. It clarifies that complex, fact-intensive inquiries, such as consumer understanding of a mark, are generally not suitable for resolution at the pleading stage under Rule 12(b)(6). This decision protects plaintiffs from premature dismissal of claims where their complaint plausibly alleges a protectable mark, ensuring that such issues are fully litigated through discovery and potentially summary judgment or trial. It emphasizes that a plaintiff's well-pleaded allegations, assumed true at this preliminary stage, are sufficient if they establish a plausible theory of trademark protection, even if the ultimate burden of proving distinctiveness or seniority is substantial.
