On “Pin”s and Needles

Successful social media hub Pinterest has sued upstart internet travel service pintrips.com for infringing on its trademark through the use of the term “pin.” Pintrips, an airfare comparison and collaboration dashboard launched in April 2013, has run up against a frequent litigator: this is Pinterest’s sixth foray into the legal arena to defend against other internet businesses encroaching on their “pin” term. However, the validity of the travel service provided by pintrips.com and the fact that Pinterest does not provide a competing service will make this particular case a tougher nut to crack. Pintrips recently answered the suit with a motion to dismiss stating, in part, that this is “a textbook example of an industry giant using a spurious lawsuit to bully a small entity” and that “the law does not permit a common generic term [“pin”] to be removed from common and pervasive use so that a single company may profit.”

Pinterest may have a valid complaint in a confusingly similar analysis regarding how the word “pintrips” looks and sounds a good deal like “pinterest” on its face. But the Pinterest claim goes much further than that, and asserts that Pinterest currently holds a singular right to the commercial use of the word “pin” in the context of websites and applications. Legally, its goal is to divorce the term “pin” from the underlying functionality provided by the website or application in question. The functionality underlying the Pintrips “pin” (price comparison) the Pinterest “pin it” (social media image aggregation) are easily distinguishable, and any court giving significant consideration to these functions will likely find for Pintrips.

Beyond the scope of this suit, Pinterest has published brand guidelines (found at http://business.pinterest.com/brand-guidelines/) which, following a section of Dos and Don’ts for businesses using functions, include the statement “Our marks also include these words as they relate to social media: pin, repin, pinner, pinboard, and pin it. Don't: Use these phrases to refer to activities that happen on other social media. Pinning only happens on Pinterest.” Further guidance instructs applications designed to work with Pinterest to refrain from using “pin” in the name. While this is a clear shot across the bow of internet developers everywhere, it is unlikely this publication holds any real legal significance and it is not cited in the complaint filed in federal court.

Pinterest has won a multimillion dollar judgment in at least one traditional cybersquatting case against a firm that mass registered domain names closely related to “Pinterest.com,” and initiated 5 other trademark infringement cases against applications more narrowly focused on direct infringement with the Pinterest brand or logo. One suit, for example, was launched against Path mobile messaging for using a “P” logo that is close in script style and coloring to the “P” logo used by Pinterest.

Overshadowing all of these legal actions is Pinterest’s intent to IPO as a publicly traded company in the near future. Characteristic of most social media companies, Pinterest’s two key assets which determine its potential value in the market are its customer base and its trademark. Court victories for Pinterest will validate the purity of the trademark and bolster a potential IPO stock price. But if the suit against Pintrips was a step too far, and Pinterest loses, Pinterest may lose more perceived value than it stood to gain in what was otherwise a viable live-and-let-live situation. Intellectual property cases are never cheap, but you can expect Pinterest to invest particularly heavily in the case.

Source: Tnooz