Archives For October 2015

A trademark lawsuit beginning in 2013 may finally be at a conclusion, resulting in Pinterest losing some ability to prevent other businesses from using the word “pin” online to save links, images, and other works.

The lessons stemming from this case are helpful to business owners everywhere. Here’s how it went down.

The Parties.

Pintrips operates a website that allows users to save travel items on other websites for later viewing on the Pintrips website. Users do this using a “pin” button that is imbedded on third party websites.

Pinterest, on the other hand, operates the widely popular website allowing users to “pin” creative items into boards on the Pinterest website. Much the same as Pintrips, users do this with a “pin it” button on third party websites.

Pinterest filed suit against Pintrips in 2013.

Pinterest is the owner of multiple Pinterest trademark registrations and at least one Pin trademark registration. As a result, it brought suit against Pintrips in 2013 seeking to prevent Pintrips from using its blue pin button to save travel information on the Pintrips website.

Complicating Pintrips business further, the USPTO denied the company’s trademark application for “pin” pending resolution of the lawsuit.

Pintrips attorneys argued that the words “pin” and “pinning” are simply part of internet terminology. They claimed that saying “pin” was much like saying “trash” in reference to a computer’s trash folder. Further, they argued it would be unreasonable to allow large corporations to “seize control” of commonly used terms that are a part of “everyday culture.”

The court agreed with Pintrips.

In tossing out Pinterest’s lawsuit, the court stated that “no reasonable weighing of the evidence presented at trial could lead to the conclusion that Pintrips used the term pin as a way to identify, distinguish, or indicate the source of its goods or services…. In fact, any attempt to distinguish Pintrips by use of its pin button would be futile, given that the words pin and pinning have been used to describe the same feature by many of the most popular and well-known software and internet products since well before Pintrips’s creation.”

The court also agreed with Pintrips’ argument that “pin” is just part of internet terminology saying that it was similar to early software designers using “real-world metaphors such as folders, files, desktops and bulletin boards to describe new technological functions.”

The lessons for your business.

This case and the loss for Pinterest is a great example you should keep in mind when creating your branding. Rather than trying to use generic terms to describe your features, try to be more original. Use arbitrary terms whenever possible if you really want to ensure you can protect your branding with trademark law. Descriptive terms may be easier to market, but arbitrary terms are easier to protect.

Want to learn more?

You should subscribe to our quarterly newsletter, Mighty Updates, to stay current with trademark news and legal issues.

Image: Pinterest Logo
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

If someone thinks you are infringing their trademark, they may send you a cease and desist letter prior to suing you for trademark infringement. Receiving one of these letters can leave you confused and/or mad. However, it is important that you take the letter seriously and carefully consider what to do next because you don’t want to end up in a trademark infringement lawsuit.

Below are four options you have when you receive such a letter.

Option One: Do nothing.

Your first option is the simplest option: do nothing. You can ignore the letter and take the risk of what happens next. Sometimes the other party will just forget about you. More often, they will send you a second or third letter. And if you still don’t respond they may seek more forceful actions against you including filing a lawsuit for trademark infringement against you in federal court.

And even if your actions don’t constitute trademark infringement, the other party can still sue you. Assuming you are not committing infringement, you might be able to win the lawsuit. But being a party to the suit won’t be fun and it can cost you a small fortune.

For that reason, you should always do something when you receive such a letter.

Most often, your best course of action will be to speak to a trademark attorney about whether your actions do or do not constitute trademark infringement. Your trademark attorney can then advise you on possibly taking one of the three routes described below.

Option Two: Negotiate.

If you agree you are committing trademark infringement, then you can try to negotiate your way out. Often times the other party will be friendly with you if you were an innocent infringer. You can ask for time to phase out your use and adopt a new name and you can sign an agreement with the other party to avoid financial damages and subsequent lawsuits.

And in some situations you can negotiate some kind of trademark license agreement or an agreement not to enter the other party’s geographical region.

If you don’t think you are committing trademark infringement, then you can negotiate a settlement or, more likely, respond as outlined below.

Option Three: Respond.

Your attorney can help you draft a proper response. If you are alleging you are not committing trademark infringement, then you need to ensure your response clearly explains why you believe you are not infringing. Citing cases or case law about how your mark is not confusingly similar to the other mark, or showing examples of why the other mark is weak, are ways you can go about arguing your case to the other party. Alternatively, if you have been using your mark longer than the other party, you may allege that as a basis of non-infringement.

And if you are really confident you are right and are concerned the other party will drag the dispute on forever, you can file a lawsuit.

Option Four: File a Lawsuit.

This is an extreme option but it can certainly be beneficial to certain trademark owners. You and your trademark attorney can file a lawsuit to seek a “declaratory judgment” of non-infringement. In short, you are asking a court to compare your mark to the other mark and rule that your use of your mark does not constitute trademark infringement.

What You Should Do

Regardless which route you want to take, you should always seek competent advice from a trademark attorney. He or she can advise you on your rights, your likelihood of success, and more. Without their experience, you may find yourself in more trouble than you need to be in.

If this post is helpful to you, you should check us out on Twitter and Facebook to stay up-to-date on trademark law.

Image: Adobe/Andrey Popov
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

When applying for a use-based federal trademark online with the United States Patent and Trademark Office, or USPTO for short, you basically have three options: the TEAS Regular application, the TEAS Reduced Fee application, and the TEAS Plus application. (TEAS stands for Trademark Electronic Application System.) Understanding which to file is an important decision.

TEAS Regular

A TEAS Regular application is the standard application. The filing fee is $325. Generally speaking, this is just a paper application process that starts online. When applying under this application, you don’t have to agree to use the internet for subsequent filings, you don’t have to supply an email address, and you can use custom information. For example, you can create your own unique goods/services description when applying.

TEAS Reduced Fee

As the name suggests, the TEAS Reduced Fee application is cheaper. It is only $275. Sometimes referred to as the TEAS RF, this application has additional requirements. Specifically, you must include an email address and you must agree to receive official application notices from the USPTO via email. Further, you must agree to file follow up filings using the TEAS platform also. However, like the TEAS Regular application, you don’t have to use a pre-approved goods/services description when submitting your application.


The TEAS Plus application is the cheapest option. It costs just $225. However, you must comply with additional requirements. Much like the TEAS RF application described above, you have to include an email address, agree to receive communications via email, and agree to use the TEAS system for subsequent filings. Additionally, you must use one of the USPTO’s pre-approved goods/services description when applying.

Of note, this application is somewhat new, appearing for the first time in early 2015.

$50 Processing Fee

You should note that if you elect to apply under one of the cheaper applications described above, you need to make sure you comply with that application’s rules. For example, if you apply under TEAS Plus but try to use a non-pre-approved goods/services description, or if you try to use a paper form, then you may be assessed additional fees. In particular, the USPTO will charge you $50 per class of goods/services for such a violation.

How do you pick?

If you are trying to decide how to apply for a federal trademark registration with the USPTO, your best bet is to speak to an attorney that has experience filing trademark applications. He or she can advise you on your ability to register your mark and if you decide to move forward, your trademark attorney can advise you on the best application to use.

In most situations the new TEAS Plus application is a great option to help you save money and to speed up the process. But sometimes you are better off using one of the other options.

Need help?

If you want help, Mighty Marks® can help you. We apply for trademarks all the time. Learn more at

Image: Adobe/alexskopje
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.