This action arises from Pintrips’ decision to adopt a social media brand that is confusingly similar to Pinterest’s, and its refusal to recognize, discuss or remediate the confusion it causes among consumers.
That is how Pinterest‘s Complaint begins against Pintrips. Filed on October 4, 2013 (full Complaint PDF), Pinterest now takes its battle to the courtroom against travel website Pintrips for trademark infringement and other causes of action after apparently trying to resolve their issues outside of court.
Pintrips, a “collaborative trip-planning dashboard for tracking flights and prices across destinations in real-time,” allows you to pin or “collect” travel search result itineraries, collaborate with other users, and “track and book” your trip, as its How It Works page describes here. Front and center are the greatest two similarities: the name and the “pin” verbiage.
Pinterest’s Complaint argued that (1) Pintrips’ name is too similar to its own in appearance, sound, and commercial impression and (2) that users already often use Pinterest to pin travel-related ideas, which also adds to the confusion among consumers (e.g. here’s a Pinterest page on @travelblawg posts). The Complaint alleges five causes of action:
- Trademark Infringement (15 U.S.C. § 1114)
- False Designation of Origin (15 U.S.C. § 1125(a))
- Trademark Dilution (15 U.S.C. § 1125(c))
- Unfair Competition (Cal. Bus. & Prof. Code § 17200)
- California Trademark Dilution (Cal. Bus. & Prof. Code § 14247)
Land of CONFUSION
A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another. 15 USC § 1127. The standard is “likelihood of confusion.” Infringement is likely to exist should it be found that consumer confusion results over the source of the goods or services due to their connection to the trademark used.
Important factors the courts often consider for trademark infringement can include:
- The popularity of the trademark;
- The similarity of the marks;
- Existence of actual confusion;
- Similarity of marketing channels used;
- Degree of caution exercised by the typical purchaser; and
- Defendant’s intent.
While California state law may be different, a dilution claim can be brought under federal law only if the mark is “famous”, which is analyzed through these (15 U.S.C. § 1125(c)) factors:
- Degree of inherent or acquired distinctiveness;
- Duration and extent of use;
- Amount of advertising and publicity;
- Geographic extent of the market;
- Channels of trade;
- Degree of recognition in trading areas;
- Any use of similar marks by third parties;
- Whether the mark is registered.
Pinterest can and does claim that, regardless of confusion, Pintrips dilutes the distinctive quality of its mark and goodwill, (valued at BILLIONS?!).
- Might the Pintrips Pin button on travel sites be mistaken for a Pinterest Pin-it button?
- Might the name alone cause confusion (and has it already)?
- Are the marketing channels (online trip planning) too similar?
- Or does the tech functionality of pinning flights and hotel deals to a dashboard differentiate itself enough?
We often see similar names and marks on products and services, but many times they are still both around because they’ve passed the confusion test with the public. For example, I’m typing this on my Apple computer while I listen to “Here Comes The Sun” (Beatles, Abbey Road, ’69) distributed on Apple Records. Apple and Apple, while identical in name, may co-exist without worry as they mark two unrelated products, i.e. a record company is not confused for a computer company (iTunes notwithstanding?).
Nevertheless, the Pinterest vs. Pintrips analysis under the factors above, among others, is clearly a closer call. I do not think the court, parties or the public can deny that the similarities do exist, but to what extent and, maybe even more interestingly, to what intent of Pintrips.
Pinterest, if successful, may be awarded an injunction against further infringing or diluting use of the trademark (15 U.S.C. § 1116(a)) and monetary relief including: (1) defendant’s profits, (2) damages sustained by the plaintiff, and (3) the costs of the action (15 U.S.C. § 1117(a)). As of this posting, Pintrips has not filed an Answer or otherwise plead. The case is set for a management conference (standard procedure) on January 17, 2014 in San Francisco’s Federal District Court for the Northern District of California.
- “Here Comes the Sun” is Harrison’s second song on Abbey Road and one of his best-known. It was written in Eric Clapton’s garden in Surrey, England.
- Here is a screenshot of Page 4 of the Complaint showing one of the examples Plaintiff Pinterest uses as an example of how it functions. Interesting choice of all the (travel) pins out there, THIS is the one selected (by the Plaintiff’s attorney):
Disclosure of Material Connection: Some of the links in the post above are “affiliate links.” This means if you click on the link and purchase the item, I will receive an affiliate commission.