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Case 3:13-cv-04608-HSG Document 261 Filed 10/21/15 Page 1 of 44
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`PINTEREST, INC.,
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`Plaintiff and Counter-Defendant,
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`v.
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`PINTRIPS, INC.,
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`Defendant and Counter-Plaintiff.
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`I.
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`INTRODUCTION
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`Case No. 13-cv-04608-HSG
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`FINDINGS OF FACT AND
`CONCLUSIONS OF LAW
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`In this case, Plaintiff and Counter-Defendant Pinterest, Inc. (“Pinterest”) alleges that its
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`rights to its “Pinterest,” “Pin,” and “Pin It” word marks are infringed by the “Pintrips” and “Pin”
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`word marks used by Defendant and Counter-Plaintiff Pintrips, Inc. (“Pintrips”). Pinterest asserts
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`five causes of action: (1) federal trademark infringement under the Lanham Act, 15 U.S.C. § 1114;
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`(2) false designation of origin under 15 U.S.C. § 1125(a); (3) trademark dilution under 15 U.S.C.
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`§ 1125(c); (4) unfair competition under Cal. Bus. & Prof. Code § 17200; and (5) trademark
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`dilution under Cal. Bus. & Prof. Code § 14247. Pinterest asks the Court to permanently enjoin
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`Pintrips from using the Pintrips and pin marks. For its part, Pintrips seeks a declaration from the
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`Court that its use of the Pintrips and pin marks does not infringe, as well as an order cancelling
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`Pinterest’s pin registrations (at least in part) if those registrations are construed to prohibit the
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`manner in which Pintrips uses the term.
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`This matter was tried to the Court, sitting without a jury, from May 18, 2015 to May 27,
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`2015. On July 3, 2015, the parties submitted post-trial briefs, see Dkt. Nos. 251 (“Pl. Br.”) and
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`248 (“Def. Br.”), and Proposed Findings of Fact and Conclusions of Law, see Dkt. Nos. 250 (“Pl.
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`FFCL”) and 249 (“Def. FFCL”). The parties filed reply briefs three weeks later. See Dkt. Nos.
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`254 (“Pl. Reply Br.”) and 253 (“Def. Reply Br.”). Closing arguments were heard August 28,
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`Case 3:13-cv-04608-HSG Document 261 Filed 10/21/15 Page 2 of 44
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`2015. The Court has carefully considered the evidence presented at trial, the exhibits admitted
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`into evidence, the parties’ briefs, and the arguments of counsel. This memorandum opinion will
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`constitute the Court’s Findings of Fact and Conclusions of Law.
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`II.
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`JURISDICTION
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`The Court has original jurisdiction under 15 U.S.C. § 1121 (claims arising under the
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`Lanham Act), as well as 28 U.S.C. §§ 1331, 1338, and 1367(a). Venue is proper in this district
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`pursuant to 28 U.S.C. § 1391(b) because the parties reside in this judicial district and a substantial
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`portion of the events giving rise to this action occurred here.
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`III. BACKGROUND
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`A. Pinterest
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`Launched in March of 2010, the Pinterest website permits its users to view, post, and
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`organize content in which they are interested by creating pins on their virtual Pinterest “Pinboard.”
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`Pins are pieces of digital content that are shaped like a vertical rectangular box, and contain a
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`photo, caption, and various action buttons. To create a pin, users can either go to a different
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`website and transfer content by clicking on a “Pin It” action button, or browse content others have
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`already pinned on Pinterest and “re-pin” that content to their Pinboard. Some pins, called “rich
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`pins,” are associated with a particular product offered by one of Pinterest’s partners. For example,
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`a rich pin of a pair of sandals from a shoe retailer’s website will automatically show the current
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`price of the sandal and whether it is in stock.
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`Pinterest permits its users to create multiple Pinboards with different subject matters.
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`Some of the most popular areas about which Pinterest users create pins on Pinterest are recipes,
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`fashion, home décor, and travel. Regardless of its subject matter, each Pinboard a Pinterest user
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`creates is viewable by all other Pinterest users by default. Pinterest users have the option to
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`change the default by creating “secret” boards that only they and their specifically invited friends
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`can see. In November of 2013, Pinterest launched a particular type of Pinboard called a “Place
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`Board,” which allows Pinterest users to add location information to certain pins. Many Pinterest
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`users use these Place Boards as part of their vacation and travel-related research on Pinterest.
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`Pinterest owns two federal trademark registrations for the word mark “PINTEREST,” see
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`Trial Exhibit (“TX”) 23; TX24, and two federal trademark registrations for the word mark “PIN,”
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`see TX25; TX26. It does not have a federal trademark registration for the word mark “PIN IT.”
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`Pinterest has used each of the Pinterest, Pin, and Pin It word marks since March of 2010.
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`B. Pintrips
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`Pintrips is a website-based travel planning service that enables users to monitor the price
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`fluctuations of airline flights. Co-founder and CEO Stephen Gotlieb came up with the concept of
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`Pintrips (initially called Flightrax) in 2010 and created a mockup for the service as part of a class
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`project for his MBA program in January of 2011. In order to use the Pintrips service, users must
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`create an account on the Pintrips website and download a Google Chrome browser extension.
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`Once installed, the Chrome browser extension inserts Pintrips’ pin button next to airline itineraries
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`when the user visits certain third-party travel websites. When a Pintrips user clicks on the pin
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`button next to an itinerary, that itinerary is automatically “pinned” to that user’s “Tripboard” on
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`the Pintrips website. Once pinned, the price displayed next to the itinerary on the user’s Tripboard
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`will update to reflect the flight’s real-time pricing and availability. Pintrips users may return to the
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`Tripboard at any time to see if their pinned flights have changed in price and to compare their
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`pinned travel options side-by-side. When a Pintrips user decides to purchase a flight, he or she
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`may click on the pinned itinerary, which redirects the user to the website from which the flight
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`was originally pinned.
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`Pintrips’ default configuration permits only individual users to access and view the trip
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`information stored on each Pintrips user’s Tripboard. Access to this information may be shared
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`with other Pintrips users only when the Pintrips user grants authorization to an individual email
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`address to view his or her Tripboard. Email addresses may only be invited one at a time; Pintrips
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`does not allow users to share their Tripboards with all other Pintrips users or any subset of Pintrips
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`users. Users can communicate with each other through a Pintrips chat feature once they are
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`invited to collaborate on the same Tripboard.
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`Pintrips does not own any federal trademark registrations. Its current application for
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`registration of the “PINTRIPS” mark has been administratively stayed pending the outcome of this
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`case.
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`Case 3:13-cv-04608-HSG Document 261 Filed 10/21/15 Page 4 of 44
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`IV. DISCUSSION
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`The Court was presented with three primary questions at trial: (1) does Pintrips’ use of the
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`“Pintrips” mark infringe Pinterest’s rights to its registered “Pinterest” mark; (2) does Pintrips’ use
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`of the term “Pin” infringe Pinterest’s rights to its registered “Pin” and/or unregistered “Pin It”
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`marks; and (3) was Pinterest sufficiently famous at the time Pintrips first used its marks in
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`commerce to support a trademark dilution claim. The Court resolves each question below.
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`A.
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`“Pinterest” vs. “Pintrips”
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`The Lanham Act prohibits the “use[ ] in commerce [of] any word, term, name, symbol, or
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`device, or any combination thereof, or any false designation of origin” that “is likely to cause
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`confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of
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`such person with another person, or as to the origin, sponsorship, or approval of his or her goods.”
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`15 U.S.C. § 1125(a)(1)(A). To establish trademark infringement under the Lanham Act, a plaintiff
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`must demonstrate that (1) it has a valid, protectable ownership interest in a mark, (2) its mark is
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`the senior mark, and (3) the defendant’s mark is likely to cause consumer confusion in the
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`marketplace. Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1202-03 (9th Cir. 2012);
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`see also Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1046-47 (9th Cir.
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`1999).
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`In this case, Pinterest asserts that Pintrips’ name infringes its registered Pinterest word
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`mark. There is no dispute that Pinterest has a valid, protectable ownership interest in the Pinterest
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`mark, and that the Pinterest mark is senior to the Pintrips mark. Pinterest’s trademark registration
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`is prima facie evidence of the validity of its marks. 15 U.S.C. § 1057(b). Accordingly, the
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`resolution of this infringement claim turns on whether the Pintrips mark is likely to cause
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`consumer confusion in the marketplace. Specifically, the question is whether consumers are likely
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`to mistakenly believe that Pintrips is “somehow affiliated with or sponsored by” Pinterest. Cohn
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`v. Petsmart, Inc., 281 F.3d 837, 841 (9th Cir. 2002); see also Dreamwerks Prod. Grp., Inc. v. SKG
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`Studio, 142 F.3d 1127, 1130 (9th Cir. 1998) (“[T]he question here is whether a reasonable
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`consumer attending a [convention sponsored by the plaintiff] might do so believing that it is a
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`convention sponsored by [the defendant].”).
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`To answer this question, the Court applies the eight-factor test articulated by the Ninth
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`Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The “Sleekcraft
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`factors” include: (1) the strength of the allegedly infringed mark; (2) the proximity of the parties’
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`goods; (3) the similarity of the parties’ marks; (4) the extent to which there is evidence of actual
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`confusion; (5) the marketing channels used by the parties; (6) the degree of care likely to be
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`exercised by the purchasers of the parties’ products; (7) the alleged infringer’s intent in selecting
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`its marks; and (8) the likelihood of expansion of the parties’ product lines. Id.
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`The courts’ application of the eight Sleekcraft factors in determining the likelihood of
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`confusion is supposed to be “pliant,” and the Ninth Circuit has warned against “excessive rigidity”
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`in their application. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008). Instead,
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`“[t]he test is a fluid one and the plaintiff need not satisfy every factor, provided that strong
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`showings are made with respect to some of them.” Surfvivor Media, Inc. v. Survivor Prods., 406
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`F.3d 625, 631 (9th Cir. 2005); see also Dreamwerks, 142 F.3d at 1129-32 (allowing case to
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`proceed past summary judgment where the plaintiff overwhelmingly satisfied three Sleekcraft
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`factors). Courts have extensive discretion in determining how much weight to accord each factor
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`based on the circumstances of the case. See Interstellar Starship Servs., Ltd. v. Epix, Inc., 304
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`F.3d 936, 941 (9th Cir. 2002).
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`As will be discussed in more detail below, after considering each Sleekcraft factor and
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`balancing them as a whole, the Court finds that the factors considered in their totality weigh
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`against a finding that consumer confusion is likely.
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`1. The “Pinterest” Mark is Suggestive
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`The purpose of examining the strength of the plaintiff’s mark is to determine the scope of
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`trademark protection to which the mark is entitled. Entrepreneur Media, Inc. v. Smith, 279 F.3d
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`1135, 1141 (9th Cir. 2002). The strength of the senior mark determines the scope of trademark
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`protection which applies. Surfvivor Media, 406 F.3d at 631 n.3. The strength of the junior mark,
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`while important in cases of reverse infringement, is not relevant to the Court’s analysis outside of
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`that context. See La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 875 (9th Cir.
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`2014) (“This is not a reverse infringement case, and the district court should not have considered
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`the strength of [defendant’s] mark in determining what level of trademark protection to extend to
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`[plaintiff’s] mark.”).
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`Trademarks are divided into five categories. The two strongest sets of marks are
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`“arbitrary” and “fanciful” marks, which trigger the highest degree of trademark protection.
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`Entrepreneur Media, 279 F.3d at 1141. The third category, “suggestive” marks, do not “describe
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`the product’s features, but suggest[] them.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo
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`Winery, 150 F.3d 1042, 1047 n.8 (9th Cir. 1998) (emphases omitted). Examples include
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`“Slickcraft” boats, or “Air Care” for a service that maintains medical equipment for administering
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`oxygen. Id.; see also Sleekcraft, 599 F.2d at 349. The fourth category of marks is referred to as
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`“descriptive.” Kendall–Jackson Winery, 150 F.3d at 1047. An example of a descriptive mark is
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`“Honey Roast” for nuts roasted with honey. Id. at 1047 n.8. Because these marks merely describe
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`a characteristic of the product, they do not receive any trademark protection unless they acquire
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`sufficient “secondary meaning” to create an association between the mark and the product. Id. at
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`1047. The final category of marks consists of “generic” marks, which “describe the product in its
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`entirety, and which are not entitled to trademark protection. Examples include ‘Liquid controls’
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`for equipment that dispenses liquid, or ‘Multistate Bar Examination’ for a bar examination that
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`may be taken across multiple states.” Surfvivor Media, 406 F.3d at 632 (citation omitted).
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`In this case, the parties agree that “Pinterest” is at least a suggestive mark, which entitles it
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`to trademark protection without a showing of secondary meaning. Sleekcraft, 599 F.2d at 349
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`(“Although less distinctive than an arbitrary or fanciful mark and therefore a comparatively weak
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`mark, a suggestive mark will be protected without proof of secondary meaning.”). While Pinterest
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`argues that the Pinterest mark may straddle the line between suggestive and arbitrary, Pl. Br. at 5,
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`the Court finds that Pinterest is clearly a suggestive mark. Suggestive marks “subtly connote
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`something about the products.” Sleekcraft, 599 F.2d at 349; see also Zobmondo Entm’t, LLC v.
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`Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010) (“A suggestive mark is one for which ‘a
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`consumer must use imagination or any type of multistage reasoning to understand the mark’s
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`significance . . . the mark does not describe the product’s features, but suggests them.’”)
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`(emphases and citation omitted). Here, the Pinterest mark is a combination of the words “pin” and
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`“interest” mashed together to create a new word. Accordingly, while understanding the meaning
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`of the “Pinterest” mark requires the public to employ the multistage reasoning that differentiates
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`suggestive marks from those that are merely descriptive, the combination of “pin” and “interest”
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`cannot reasonably be said to be arbitrary or fanciful. The Pinterest mark is a textbook example of
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`a suggestive mark that “subtly connote[s] something” about the company’s services, Sleekcraft,
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`599 F.2d at 349, in that it conveys to users that the website allows them to pin their interests.
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` The Court’s conclusion that Pinterest is a suggestive mark does not end the inquiry under
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`this factor. Identifying whether a mark is arbitrary, fanciful, suggestive, descriptive, or generic is
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`only the first step. The second step is to determine the strength of the mark in the marketplace,
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`i.e., the commercial strength of the mark. One Indus., LLC v. Jim O’Neal Distrib., Inc., 578 F.3d
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`1154, 1164 (9th Cir. 2009). “When similar marks permeate the marketplace, the strength of the
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`mark decreases. In a crowded field of similar marks, each member of the crowd is relatively weak
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`in its ability to prevent use by others in the crowd.” Id. (internal quotation marks omitted). “The
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`more likely a mark is to be remembered and associated in the public mind with the mark’s owner,
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`the greater protection the mark is accorded by trademark laws.” GoTo.com, Inc. v. Walt Disney
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`Co., 202 F.3d 1199, 1207 (9th Cir. 2000).
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`Pintrips offers little argument to dispute that “Pinterest” is a commercially strong mark.
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`See Def. Br. at 18. At the time of the bench trial, approximately one-quarter of the United States’
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`population (i.e., 80 million people) used the Pinterest website each month. The Court was not
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`presented with evidence that the marketplace is crowded with other similar names. Although the
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`Ninth Circuit has noted that suggestive marks are “comparatively weak,” Sleekcraft, 599 F.2d at
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`349, the Pinterest mark should be afforded greater protection than most other suggestive marks
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`given its commercial strength. Accordingly, the Court finds that this Sleekcraft factor weighs
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`slightly in favor of Pinterest.
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`2. The Proximity of the Parties’ Goods or Services
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`“Goods or services that are closely related are generally more likely than unrelated goods
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`or services to confuse the public as to their sources.” La Quinta, 762 F.3d at 875 (citation
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`omitted). The proximity of the parties’ products is relevant to the confusion analysis in that “[f]or
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`related goods, the danger presented is that the public will mistakenly assume there is an
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`association between the producers of the related goods, though no such association exists. The
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`more likely the public is to make such an association, the less similarity in the marks is requisite to
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`a finding of likelihood of confusion.” Sleekcraft, 599 F.2d at 350 (citation omitted). The public is
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`likely to make such an association “when the goods are complementary, the products are sold to
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`the same class of purchasers, or the goods are similar in use and function.” Id.; see also
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`Brookfield Commc’ns, 174 F.3d at 1056 (“[T]he relatedness of each company’s prime directive
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`isn’t relevant. Instead, the focus is on whether the consuming public is likely somehow to
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`associate [the defendant’s] products with [the plaintiff].”) (citation omitted).
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`Pinterest argues that the Pinterest and Pintrips websites are related because both companies
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`offer “services related to the travel industry generally” and “collaborative products that allow
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`consumers to plan travel using the Internet.” Pl. Br. at 6-7. Pinterest points to evidence
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`introduced at trial demonstrating that Pinterest users often use its website to research their travel
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`destinations and activities. See Tr. at 72:4-7 (“So a lot of people will use Pinterest to plan dream
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`vacations, honeymoons, as we saw earlier. I’ve used it to plan travel itineraries for people coming
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`to visit me in cities.”); id. at 72:16-17 (“There are lots of pins that will provide ideas about how
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`you can save money or find the best -- best travel tips.”); id. at 73:7-9 (“[W]e worked with Travel
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`+ Leisure Magazine to get some coverage for Place Pins at launch, then to explain how people use
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`Pinterest for travel.”). Pinterest also offered evidence that it allows users to create place pins on
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`their Place Boards, which adds specific location information to a pin. See Tr. at 58:22-24 (“That’s
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`a button that would allow the user to add some data to that pin using a partner that we have called
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`[F]oursquare so that they can identify the actual location of that pin.”). Certain pins can be
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`associated with indicators called “map markers,” which show the user where, for example, a pin of
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`a hotel would be located on a map. See Tr. at 60:22-61:6.
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`While the Court credits the testimony of the Pinterest witnesses who discussed how
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`Pinterest is used to research travel destinations, the Court disagrees that this use is similar to
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`Pintrips’ service. Pintrips is an online tool that tracks fluctuating airline prices by providing users
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`the ability to save flight itineraries from multiple airline websites to a single location. See Tr. at
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`464:2-474:14. After searching airline websites and pinning the itineraries they wish to track,
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`Pintrips users may then return to the Pintrips website—without needing to duplicate the effort of
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`their initial search—to see whether their selected flights have become more or less expensive. Id.
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`Pintrips does not provide users the opportunity to research their travel destinations, identify sights
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`to see while traveling, or gather ideas for new travel destinations from other users, given that all
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`Pintrips Tripboards are, by default, private. Id. at 476:1-477:11. The only arguable “social
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`media” aspect of the Pintrips site is a function allowing users to individually invite other users
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`(generally traveling companions or people making travel arrangements on the user’s behalf) to
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`access a particular trip so that those users can also view and pin itineraries for the primary user’s
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`trips. Id.; see also id. at 661:10-23.
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`In contrast, Pinterest is a social media website where users can share photos, articles, and
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`other information about their interests on personalized web-based Pinboards which are, by default,
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`viewable by all of Pinterest’s 80 million monthly users. Tr. at 61:25-62:3. Travel is just one of
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`the dozens and dozens of exceptionally broad subject-matter categories about which Pinterest
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`users choose to pin. Tr. at 125:5-126:7. While Pinterest users undoubtedly use the service to
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`research their travel destinations (as well as hundreds of other subjects), that fact does not render
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`Pinterest’s social media service similar to Pintrips’ airline itinerary-tracking tool. Pinterest has no
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`travel booking function; is not working on a travel booking function; and has no concrete plan to
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`begin working on a travel booking function in the future. See Tr. at 88:14-15 (“We’ve discussed
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`[expanding Pinterest’s products to facilitate booking travel], but we haven’t specifically set a date
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`when we would start working on something like that.”). That Pinterest may aspire to provide a
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`tool similar to Pintrips’ service at some unknown point in the future is too speculative and
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`indefinite to weigh in favor of a finding of proximity under this factor.
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`In further support of its argument, Pinterest cites to a few emails in which Pintrips
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`executives refer to Pinterest as a possible competitor. See, e.g., TX40; TX186. Although the
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`Court agrees that these statements are relevant to its analysis, the Court finds the comparison of
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`the services actually performed by the Pinterest and Pintrips websites to be more persuasive than
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`the representations made by Pintrips’ executives to a public relations firm and in an investor pitch
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`Case 3:13-cv-04608-HSG Document 261 Filed 10/21/15 Page 10 of 44
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`deck. For example, in Mr. Gotlieb’s November 7, 2012 email to an employee at a public relations
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`firm, he states that “[t]he main competitors Pintrips has are meta-sites. . . . The other competitors
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`are either players that need to pivot and like our idea or newcomers.” TX40 at
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`PINTRIPS_00006790. In what appears to be almost an afterthought, Mr. Gotlieb states that
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`“[o]ne more competitor would actually be Pinterest.” Id. at PINTRIPS_00006791. The Court also
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`does not find the “WHY INVEST NOW?” section of an investor pitch deck introduced at trial
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`through Pintrips’ Chief Product Officer, Sheila Bijoor, to override the Court’s analysis of the
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`parties’ services. See TX186 at PINTRIPS_00006824 (“[I]nvest in us NOW because we have the
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`ingredients for success, and there is competition in the market from players like Pinterest – so we
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`have no time to waste!!”) (capital lettering and exclamation points in original). Both emails
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`appear tailored to evoke a comparison to an already successful company, rather than serve as a
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`reasoned analysis of Pintrips’ realistic competitors. The Court agrees with Ashley Raiteri, a travel
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`industry consultant who was an integral player in the genesis of the Pintrips product (and who has
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`substantially more experience working and consulting in the travel industry than Mr. Gotlieb or
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`Ms. Bijoor, Tr. at 640:16-642:4), that Pinterest is not a competitor of Pintrips, Tr. at 672:2-5
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`(stating that he did not “consider Pinterest to be a competitor of [Pintrips] or its products”).
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`Although this Sleekcraft factor does not weigh quite as overwhelmingly in favor of Pintrips
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`as it would in the absence of the emails cited by Pinterest, the Court finds that this factor still
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`strongly weighs against a likelihood of consumer confusion.
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`3. Similarity of the Parties’ Marks
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`“The similarity of the marks is ‘a critical question in the likelihood-of-confusion
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`analysis.’” La Quinta, 762 F.3d at 875 (citation omitted). To assess similarity, courts must
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`“compare the two marks in terms of sight, sound, and meaning, considering the marks as a whole,
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`as [they] appear in the marketplace.” Id. (internal quotation marks and citation omitted); see also
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`Sleekcraft, 599 F.2d at 351 (“Similarity of the marks is tested on three levels: sight, sound, and
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`meaning.”). Similarities between marks generally weigh more heavily than differences, id., and
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`the amount of similarity required to support a likelihood of confusion decreases where the services
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`at issue are themselves similar, La Quinta, 762 F.3d at 876 (citations omitted).
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`United States District Court
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`Case 3:13-cv-04608-HSG Document 261 Filed 10/21/15 Page 11 of 44
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`a. Sight
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`There are undeniable visual similarities between the “Pinterest” and “Pintrips” marks.
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`Each mark begins with the word “pin” and then continues with another word (or portion of
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`another word) beginning with the letter “t.” The marks are also the same approximate length: nine
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`letters for Pinterest and eight letters for Pintrips. However, this is not a case where the allegedly
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`infringing mark differs in only one or two inconspicuous letters in the middle of the mark, see
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`Sleekcraft, 599 F.2d at 351 (Sleekcraft and Slickcraft), or is identical save for different emphasis
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`on one of the letters, see Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1128 (9th Cir. 2014)
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`(observing the “o” in “POM” is heartshaped, and the “o” in “pom” has a breve over it). Here, the
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`second half of each mark bears significant differences (i.e., “terest” and “trips”). While the
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`differences in the latter half of the marks do not completely overcome the visual similarities
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`identified above, they lessen the weight the Court gives to this sub-factor. Accordingly, this sub-
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`factor weighs only slightly in favor of a finding of confusion.
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`b. Sound
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`“Sound is also important because reputation is often conveyed word-of-mouth.”
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`Sleekcraft, 599 F.2d at 351. “Slight differences in the sound of trademarks will not protect the
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`infringer.” Id. at 352 (internal quotation marks and citation omitted). Pintrips argues that the
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`marks do not sound the same because Pintrips is a two-syllable word, while Pinterest is a three-
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`syllable word. Def. Br. at 17. Although Pintrips may be correct as a matter of grammar, the Court
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`accepts Pinterest’s argument (which is consistent with the pronunciations used by counsel and
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`witnesses at the trial) that, in the real world, Pinterest often may be pronounced with two syllables
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`(i.e., “Pin-trist”). Regardless, whether pronounced with two or three syllables, there is sufficient
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`similarity in the sound of each mark to plausibly cause consumer confusion. The first syllable of
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`each mark is identical, as is the first letter of the second syllable, followed very closely (although
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`not immediately in the Pinterest mark) by an “r”. Accordingly, while the marks do not sound
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`identical when spoken, they sound sufficiently similar for this sub-factor to favor a finding of
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`confusion.
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`Case 3:13-cv-04608-HSG Document 261 Filed 10/21/15 Page 12 of 44
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`c. Meaning
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`“Closeness in meaning can itself substantiate a claim of similarity of trademarks.”
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`Sleekcraft, 599 F.2d at 352. In this case, both marks are “made up” words that do not appear in
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`the dictionary. Pinterest is a “mashup” or “telescoped” word, in that it combines two words (pin
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`and interest) but does not repeat the two shared letters at the end of pin and the beginning of
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`interest. Pintrips is a compound word comprised of two words (pin and trips) with no shared
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`letters removed. Although both words suggest that consumers will be able to perform the well-
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`known computer operation of pinning, each mark also suggests that the services permit consumers
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`to pin different things: interests for Pinterest and trips for Pintrips. In other words, the only shared
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`meaning associated with the two marks is based on the descriptive term “pin.” When viewed as a
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`whole, the Court finds that the meanings of these made-up words do not support a finding of
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`likelihood of consumer confusion. Accordingly, this sub-factor weighs in favor of Pintrips.
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`*
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`*
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`*
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`In summary, the sight sub-factor weighs slightly in favor of Pinterest, the sound sub-factor
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`weighs in favor of Pinterest, and the meaning sub-factor weighs in favor of Pintrips. Considering
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`all three similarity sub-factors together, the Court finds that this Sleekcraft factor weighs slightly
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`in favor of a finding of consumer confusion.
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`4. Evidence of Actual Confusion
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`“Evidence that use of the two marks has already led to confusion is persuasive proof that
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`future confusion is likely.” Sleekcraft, 599 F.2d at 352. However, due to “the difficulty in
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`garnering such evidence, the failure to prove instances of actual confusion is not dispositive. . . .
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`[T]his factor is weighed heavily only when . . . the particular circumstances indicate such evidence
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`should have been available.” Id.; see Brookfield Commc’ns, 174 F.3d at 1050 (“[D]ifficulties in
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`gathering evidence of actual confusion make its absence generally unnoteworthy.”).
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`As observed by the Ninth Circuit in many other cases, it is unsurprising that there is little
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`evidence of actual confusion here. Pinterest points to a single email sent to Pintrips’ customer

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