Pinterest Comes Up Short in Interesting Trademark Decision
The federal court for the Northern District of California has denied permanent injunctive relief in a lawsuit for trademark infringement and dilution brought by Pinterest against the use of the mark PINTRIPS for a website-based travel planning service. Pinterest, Inc. v. Pintrips, Inc., 13-cv-04608 (N.D. Cal. Oct. 21, 2015). The conclusion of non-infringement was based on a straightforward analysis of the multi-factor test for evaluating likelihood of confusion, but the decision includes an interesting assessment of the conflicting evidence of the defendant’s intent in adopting the PINTRIPS mark as well as the rejection of Pinterest’s effort to rely on a supposed instance of actual confusion by the mother-in-law of Pintrips’ CEO.
The evidence as to why the PINTRIPS mark was chosen showed that the name was conceived during a three day brainstorming session in June 2011 in which the participants often used the word “pin” to describe how a user could organize content on the future website. The participants had not heard of PINTEREST name at the time they alighted on PINTRIPS as their desired name. Later that day, however, one of the participant’s wives noted the similarity of the planned PINTRIPS website to the PINTEREST website, an observation that was shared among the brainstorming group. Pinterest also presented evidence that the CEO of Pintrips was not particularly perturbed that the PINTRIPS name turned out to be similar to a much more well-known mark, saying “[I]t’s a coincidence. But it might play to our hand.” On these facts, the court found the intent of the defendant in selecting the PINTRIPS name to be a neutral factor in the likelihood of confusion analysis, a judgment that might have gone the other way.
The court further declined to credit two confusion surveys introduced by the plaintiff. One was rejected because the stimulus did not depict the PINTRIPS mark alone, but rather combined it with a “pin” button. The court concluded that Pintrips’ use of a “pin” button was a permissible fair use based on extensive testimony concerning the longstanding and widespread use of the word to describe a technological function of a website; accordingly, it was improper to include the “pin” button as an element in the survey stimulus when the survey should have measured confusion arising just from the name PINTRIPS. The second survey was found to be fatally defective because the stimulus showed the use of a Pintrips “pin” button at the bottom of the United Airlines website, even though Pintrips had never used a “pin” button in that manner.
Pinterest pulled out all the stops in its effort to show actual confusion, attempting to rely on evidence that the mother-in-law of Pintrips CEO Stephen Gotlieb had mistakenly believed that “Pinterest” was the name of her son-in-law’s company. Not surprisingly, the court did not find this testimony persuasive: “The trial evidence established that English is Mr. Gotlieb’s mother-in-law third language, that she has difficulty enunciating English words, and that she just started using the Internet in 2013.” To say that the mother-in-law was not a typical consumer of defendant’s services would be an understatement.
Finally, the court rejected the plaintiff’s dilution claim, finding that Pinterest had not met its burden of proof that its now-well known mark had become famous by the time the defendant first made commercial use of the PINTRIPS mark in October 2011.