Pinterest, Inc. v. Pintrips, Inc.
2015 U.S. Dist. LEXIS 143394, 2015 WL 6167967, 140 F. Supp. 3d 997 (2015)
Rule of Law:
A defendant may assert a fair use defense for a descriptive term if it is used otherwise than as a mark and in good faith to describe its goods or services, even if some consumer confusion may result. Trademark dilution requires a mark to be 'famous,' meaning widely recognized by the general consuming public as a designation of source, which is a high standard.
Facts:
- Pinterest, launched in March 2010, is a social media website allowing users to view, post, and organize digital content by creating 'pins' on virtual 'Pinboards' across various subject matters.
- Pinterest users, by default, have their Pinboards viewable by all other users, and in November 2013, Pinterest launched 'Place Boards' for adding location information to travel-related pins.
- Pinterest owned two federal trademark registrations for 'PINTEREST' and two for 'PIN', but not for 'PIN IT', with all marks used since March 2010.
- Pintrips, conceived in 2010 and mocked up in January 2011, is a website-based travel planning service that enables users to monitor airline flight price fluctuations.
- To use Pintrips, users must create an account and download a Google Chrome browser extension that inserts a 'pin button' next to airline itineraries on third-party travel websites.
- Clicking the Pintrips 'pin button' saves an itinerary to a user's private 'Tripboard,' where its price and availability update in real-time, facilitating side-by-side comparison.
- Pintrips' co-founder and CEO Stephen Gotlieb and his team developed the 'Pintrips' name during a June 2011 brainstorming workshop, arriving at the name 'Pintrips' before learning of Pinterest's existence.
- Pintrips first used its name in commerce by October 2011, by collecting email addresses via its launch page and sending out approximately 5,000 email invitations to install and use its product.
Procedural Posture:
- Pinterest, Inc. filed a complaint in the United States District Court for the Northern District of California against Pintrips, Inc., asserting five causes of action: federal trademark infringement, false designation of origin, federal trademark dilution, state unfair competition, and state trademark dilution.
- Pintrips, Inc. filed counterclaims seeking a declaration that its use of marks does not infringe and an order to cancel Pinterest's 'Pin' registrations if construed to prohibit its use.
- The case proceeded to a bench trial before the District Court, without a jury, from May 18, 2015, to May 27, 2015.
- Following the trial, the parties submitted post-trial briefs and proposed findings of fact and conclusions of law on July 3, 2015, followed by reply briefs three weeks later.
- Closing arguments were heard on August 28, 2015.
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Issue:
1. Does Pintrips' use of the 'Pintrips' mark infringe Pinterest's registered 'Pinterest' mark under the Lanham Act? 2. Does Pintrips' use of the term 'Pin' infringe Pinterest's registered 'Pin' and/or unregistered 'Pin It' marks, or is Pintrips' use protected by the fair use defense? 3. Was Pinterest's mark sufficiently famous at the time Pintrips first used its marks in commerce to support a trademark dilution claim?
Opinions:
Majority - Haywood S. Gilliam, Jr., United States District Judge
1. No, Pintrips' use of the 'Pintrips' mark does not infringe Pinterest's registered 'Pinterest' mark because it is not likely to cause consumer confusion. Applying the eight 'Sleekcraft' factors, the Court found that while Pinterest's mark is commercially strong and there's some visual and aural similarity between the marks, the services are not similar in use and function. Pinterest is a broad social media platform used for general interest curation, whereas Pintrips is a specific tool for tracking airline itineraries, without booking functionality. There was no persuasive evidence of actual confusion, as Pinterest's survey evidence was fatally flawed, and the single email received by Pintrips was insufficient. Marketing channels (general internet advertising) were too common to weigh heavily, and consumers exercise a higher degree of care due to the steps required to use the services (account creation, browser extension). Crucially, Pintrips developed its name independently without intent to leverage Pinterest's brand recognition, and Pinterest had no concrete plans to expand into a travel booking function similar to Pintrips. Balancing these factors, the Court concluded that Pinterest had not met its burden to prove a likelihood of consumer confusion. 2. No, Pintrips' use of the term 'Pin' does not infringe Pinterest's 'Pin' and 'Pin It' marks because it constitutes fair use under the Lanham Act. The Court determined that Pintrips uses 'pin' descriptively, otherwise than as a mark, and in good faith, to describe a feature of its service. Substantial evidence demonstrated that 'pin' and 'pinning' have concrete and well-known meanings in computing for over twenty years (e.g., Microsoft, Google, Facebook) to describe attaching virtual objects. Pintrips explicitly describes its 'pin button' as a feature to 'pin any flight,' reinforcing its descriptive, functional use. The styling of the button also reinforces this descriptive purpose, not source identification. Pintrips conceived of its 'pin' functionality and name before hearing of Pinterest, and its use aligns with the widespread, common usage of the term in technology, thus satisfying the good faith requirement. Therefore, Pintrips' use of 'pin' is a fair, descriptive use of a common computing term. 3. No, Pinterest cannot prevail on its trademark dilution claims because its marks were not famous by the time Pintrips first used its marks in commerce. The Court established October 2011 as the date of Pintrips' first commercial use, when it created a launch website, promoted its product, and sent thousands of email invitations to use its service. By this date, Pinterest had approximately 1 to 5 million monthly users, representing less than 2% of the U.S. population, and was still an invitation-only website. The high standard for 'fame' under the FTDA requires a mark to be a 'household name' or 'part of the collective national consciousness.' News articles from late 2011/early 2012 often needed to explain what Pinterest was, indicating a lack of widespread recognition. A survey presented by Pinterest showing high recognition was deemed unreliable due to an unrepresentative respondent pool. This evidence falls significantly short of demonstrating the extraordinarily high level of public awareness required for a mark to qualify as famous for dilution protection.
Analysis:
This case offers critical insights into trademark law, particularly in the rapidly evolving digital landscape. It highlights the stringent standard for proving consumer confusion in infringement cases, emphasizing that distinct core services can overcome superficial similarities in names, especially when coupled with independent development and a lack of proven intent to deceive. The ruling also significantly clarifies the scope of the fair use defense, confirming that widely understood, descriptive terms for digital actions (like 'pinning') cannot be exclusively monopolized by a trademark holder, allowing others to use them functionally. Furthermore, the decision reinforces the exceptionally high bar for achieving 'famous' status in trademark dilution claims, indicating that even rapid growth and significant media attention may not suffice to establish a mark as a 'household name' across the general consuming public.
