The company Pinterest lost a Legal Rights Objection (LRO) against Amazon, Inc. related to the New gTLD string .PIN that Amazon applied for.
Pinterest lost, even though it is the world’s third largest social media site behind Facebook and Twitter and uses the term “pin” for almost all of its functions.
Users of the site are called “pinners’ and they “pin” their favorite items, recipes, designs, interests, anything they love, etc to a “pinboard” displaying their collection of favorites. Pinterest’s Deputy General Counsel, Mr. Anthony Falzone, maintains that “more than a hundred million people have seen the PIN IT button, likely billions of times.
Pinterest has several national trademark registrations (including the U.S.) and several applications pending. Pinterest has a pending United States application for the trademark “PIN” (serial number 85-698,998) and argued in the LRO that it already has common law rights for “PIN” in the U.S.
Interestingly enough, Amazon and Pinterest exchange a lot of traffic – users on Pinterest often go to Amazon to purchase items that were “pinned” by the user.
The WIPO Panel found it legally appropriate to take into account Pinterest’s registered worldwide trademarks, as opposed to adhering to Amazon’s request to just consider the United States trademarks. The Panel acknowledged that pending trademark applications were a grey area and ultimately determined that it would not consider Pinterest’s pending applications in “Pin” and “Pin It”, but would consider whether or not Pinterest had common law rights to the terms.
Here, the Panel found that Pinterest did not really use the terms as trademarks. Specifically, it described the term “Pin” as a “common English descriptive word” and therefore the burden was on Pinterest to present “compelling evidence of secondary meaning or distinctiveness.” The Panel was not satisfied that Pinterest met its burden and stated:
“[b]ecause Pinterest and others use this dictionary term for its dictionary meaning and not as a trademark, the Panel is not satisfied that ‘PIN’ functions as a mark to identify Pinterest or its goods or services.”
The Panel did find that the stylized “P” logo and term “Pin It” were recognized marks, but explained that the marks were not similar enough to “PIN” to warrant upholding the objection.
The Amazon .PIN application seems odd, and a bit like it is taking advantage of the fact that .PIN is both a “common dictionary phrase” and a well-known and popular term among Pinterest users. It will be interesting to see if the companies come up with a working agreement around the registry, and if not, if Pinterest will look to take further legal action outside the New gTLD administrative procedures to block Amazon from using the .PIN registry...