October, at least in these United States of America, is the spooookiest month of the year. People celebrate the macabre by wearing costumes, decorating their houses to look like graveyards, and generally getting into the spirit of Halloween. It’s usually good month for Corporate America as sales for candy, costumes, and decorations experience a much needed bump leading into the winter holiday season. For Pinterest, however, this October of 2015 has been a frightening one, and for all the wrong reasons.
Nightmare on Court Row
Pinterest has lost two separate court cases this month, one in the U.S. and one in the U.K. In both cases, Pinterest tried to prevent startups from using the word “pin” in connection with their online services. Here in the colonies, Judge Haywood S. Gilliam, Jr. of the Northern District of California, found that Defendant’s use of “Pintrips” and “Pin” did not infringe any of Pinterest’s trademark rights. The Court found that although “Pinterest” is a suggestive mark, the dissimilarity of the services (public social media boards vs. private comparison of flight prices) and expansion markets targeted by Pintrips meant that there was no likelihood of consumer confusion, and thus no trademark infringement. Insofar as using “pin” goes, Pintrips successfully argued a fair use defense allowing its use. Pintrips showed that it was using “pin” as a verb, because users digitally “pin” travel itineraries to a board, rather than use as a trademark for the Pintrips brand. The court agreed and held that because Pintrips uses “pin” in good faith to describe its services, and not as a trademark, it is a fair use unpreventable by Pinterest.
Meanwhile, across the pond, Pinterest unsuccessfully attempted to stop Free118 from registering the trademark “pinmydeal.” Free118 is a location-specific provider of advertisements, “aim[ing] to assist people to find the businesses and services they require wherever they want. . . and based on locality.” The U.K. decision held that “pinmydeal” does not infringe any of Pinterest’s marks for one simple reason: the word “pin” is too common to give Pinterest even a limited monopoly over the word. In fact, Judge Gilliam in California echoed this sentiment, stating, “Pinterest cannot prohibit other companies from using the word pin to describe that well-known operation, which is exactly how the evidence demonstrates that Pintrips uses the word pin here.” That “well-known operation” the court refers to is what Merriam-Webster defines as “to fasten, join, or secure with a pin.” And with a mark like “pin,” it is no surprise Pinterest is getting more tricks than treats this Halloween, and might even shed some light on why the maker of Candy Crush Saga has been settling cases about its trademark rights in “candy,” and “saga.”
Invasion of The Categories of Trademark Strength
A trademark is anything, and I do mean anything, that identifies the source for goods or services, distinguishing it from those of others, and that represents the goodwill associated with that product or service. Goodwill is the reputation of a business regarded as a quantifiable asset, e.g., as represented by the excess of the price paid at a takeover for a company over its fair market value represented in revenues and assets alone. Trademark rights thus require both use in commerce and distinctiveness.
Distinctiveness can be either inherent or acquired. A mark is inherently distinctive when the public immediately reacts to the packaging (or whatever the mark is) and automatically associates it with the producer. Acquired distinctiveness occurs when a mark is not inherently distinctive, but then becomes distinctive through use, such that the public comes to automatically associate the product with the producer. Acquired distinctiveness is usually called secondary meaning, because the first (initial) meaning in the mark is ornamental, and it is only through use that the second, source-identifying meaning evolves.
Trademarks are divided into five categories of strength, (1) fanciful and (2) arbitrary marks, which trigger the highest degree of protection; (3) suggestive marks, which do not describe a product’s features, but rather suggests them; (4) descriptive marks; and (5) generic trademarks. Fanciful marks (Xerox) and arbitrary marks (Apple for computers) receive the highest degree of protection since they are either made-up or so unrelated to the product or service offered that they naturally stick in the mind. Suggestive marks are also inherently distinctive; they require an inferential step by the consumer to connect the trademark with the product, such as “Greyhound” for busses. Suggestive marks, though inherently distinctive, are weaker than arbitrary or fanciful marks because of their subjective nature – what is suggestive to one person may be descriptive to another. Descriptive marks, such as “Shake’N Bake” describe a characteristic of a product, and are only protectable if they acquire secondary meaning. Lastly, generic marks “describe [a] product in its entirety,” and receive no trademark protection, such as “Multistate Bar Examination,” for a bar exam that may be taken across multiple states, or your local “Dry Cleaner.”
So what’s up with the “pin” mark? When used in connection with digitally pinning content to an online post board, it seems like an uphill battle for convincing anyone it is not generic. The digital nature of the program does not make the use any less descriptive, the allegory is clear. It looks like Pinterest might need to prepare for the invasion of the pin snatchers this Halloween.