Genericness and Priority Are Not Suitable Issues for Resolution on a Motion to Dismiss

Author: Julia Anne Matheson

In October 2013, social media giant Pinterest filed suit against travel planning startup Pintrips for trademark infringement and dilution alleging confusing similarity both in the parties’ names and in the PIN IT versus PIN buttons utilized by their respective websites.

Social media heavyweight Pinterest provides an online platform whereby users can post images and other content to various themed “bulletin boards” associated with the user’s account. User posts are identified as “pins” whereas the act of posting is known as “pinning.” According to Pinterest, its popular “Pin It” button, a critical part of the site’s functionality used to facilitate user participation with the Pinterest service, as well as an important advertising tool, is currently featured on hundreds of thousands of third party websites. Pintrips is a travel planning service that allows users to collaboratively plan flights and travel plans using its PIN button.

In response to the Complaint, Pintrips filed a motion to dismiss alleging that the term “pin” is generic and therefore unprotectible as a trademark. In a recent ruling offering useful guidance on what can and cannot be resolved at the pleading stage, the Northern District of California denied the motion to dismiss and allowed the case to proceed.

In its motion to dismiss, Pintrips argued that “pin” was generic for the action performed by users when posting content. Much like one would “pin a location on a map,” Pintrips asserted that “pin” was just another user command like “cut,” “paste,” “like,” “print,” or “send” and, thus, could not serve a source identifying function.

In its ruling, the court emphasized that a motion to dismiss was not the appropriate vehicle by which to determine the highly fact-specific question of genericness. The determination of whether “pin” described the genus of the relevant services – or whether it identified Pinterest’s brand of those services — was a highly fact-specific question not appropriate for determination at the pleading stage.

Although there have been cases where a court will make such a determination in response to a motion to dismiss, the court emphasized that these situations are rare and limited to cases where “the complaint suffers from a complete failure to state a plausible basis for trademark protection.” Finding that Pinterest had sufficiently and plausibly set forth a theory under which its “pin” mark could be entitled to trademark protection, the court concluded that a determination of genericness or functionality was premature.

Pintrips also argued that even if “pin” is protectable, Pinterest was not the mark’s senior user and was thus not entitled to assert a claim of exclusive rights. In this regard, Pintrips pointed the court to uses of “pin” by Microsoft, Google, and Facebook. The court rejected Pintrips’ request to take judicial notice of facts and evidence – such as third-party use of the term “pin” –  on a motion to dismiss. Noting that the issue of priority was likewise a highly fact specific inquiry, the court deferred a ruling on this issue to the merits and ultimately dismissed Pintrips’ motion in its entirety.

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