U.S. District Judge Haywood S. Gilliam, Northern District of California (Jason Doiy / The Recorder)
SAN FRANCISCO — Social-media giant Pinterest Inc. can’t block a startup travel planning site from using the similar-sounding name Pintrips, a federal judge ruled Wednesday.
U.S. District Judge Haywood Gilliam Jr. sided with Pintrips Inc. and its lawyers at Kenyon & Kenyon in the companies’ trademark spat, finding that Pintrips came up with its name independently and that its use of the term “pin” falls in line with its long-time use in the computer lexicon.
“Pintrips produced substantial evidence at trial that the terms pin and pinning have concrete and well-known meanings in both the computing field generally and the social-media field specifically,” wrote Gilliam, who oversaw a bench trial between the two Pin companies in May.
In October 2013, Pinterest sued Pintrips claiming that the startup could have chosen any name, but intentionally selected one deceptively close to its famous mark. Pinterest, the nation’s third most popular social-media site, also claimed common law rights to “pin,” “pin it” and all “pin-formative” marks used in relation to social media and bookmarking.
Gilliam acknowledged in Wednesday’s decision that the names look and sound similar. But the judge found that Pintrips witnesses had offered “credible and detailed” testimony about the three-day brainstorming workshop that yielded the name for the airfare comparison tool in June 2011—before Pinterest had become widely known.
“No evidence was introduced at trial that suggested that the Pintrips mark was selected to take advantage of Pinterest’s brand recognition,” Gilliam wrote. “In fact, no evidence suggests that Pinterest had substantial brand recognition as of June 2011 that Pintrips would want to appropriate.”
Gilliam found that the Pintrips’ use of the word “pin” qualified as fair use under the Lanham Act based on the term’s broader use in computing. Pintrips introduced evidence at trial that Microsoft Corp. had used the term in relation to its products more than a decade ago and that Google has included pinning functions in its Android smartphone and tablet operating system.
“In short, the words pin and pinning are regularly used to describe a particular, well-known, and decades-old computer operation,” Gilliam wrote.
A Pinterest spokesperson stressed that the ruling was based on the contention that Pintrips hadn’t heard of Pinterest more than four years ago. “While we’re disappointed in that conclusion, it doesn’t have any implications for our marks today or the future,” the spokesperson said via email.
Quinn Emanuel Urquhart & Sullivan’s Diane Doolittle, who headed up Pinterest’s trial team, didn’t respond to messages.
Kenyon & Kenyon’s Edward Colbert, the head of the Pintrips trial team, said in an emailed statement that the case “confirms that any company may use [pin-] words for their ordinary meaning and prevents a large company with significant assets from trying to seize control of a commonly used word that is part of our everyday culture.”
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