— Jessica Gutierrez Alm, Attorney

Trademark enforcement, particularly in an age of social media and internet shaming, is tricky business.  Some brands (I’m looking at you, Louis Vuitton) seem to have enough market share to ignore the social backlash from their heavy-handed demand letters.  But companies that lack that kind of brand power could benefit from a bit more finesse in their enforcement efforts.

Aloha Poke Co. is a Chicago-based poke restaurant.  Poke—a traditional Hawaiian dish of raw fish—has spread through the mainland in the form of fast-casual rice bowls topped with colorful veggies and sauces.  Aloha Poke opened its first store in 2016.  The company now boasts 15 locations across the U.S., including one right here in Minneapolis.  Aloha Poke holds two trademark registrations, one of which is a word mark for ALOHA POKE.  Despite the questionable trademark use of a word as ubiquitous as “Aloha,” the Trademark Office registered the mark without a single Office Action.  The Trademark Office only required Aloha Poke to disclaim rights to the word “poke.”

Recently, Aloha Poke sent cease and desist letters to various poke shops across the country having “Aloha” in their names.  “Aloha Poke would prefer to settle this matter amicably and without court intervention,” the letter read.  “We therefore request that you immediately stop all use of ‘Aloha’ and ‘Aloha Poke.’”  That doesn’t sound particularly amicable.

At least some of the restaurants receiving the letter were native Hawaiian-owned.  Tasha Kahele is a native Hawaiian and the owner of what was formerly the Aloha Poke Stop in Anchorage, Alaska.  After receiving Aloha’s letter, she changed her shop’s name to Lei’s Poke Stop.  Aloha Poke’s demands that native Hawaiian people stop using two Hawaiian terms is not sitting well with many.  Many have called Aloha Poke’s efforts a clear case of cultural appropriation.  An online petition demanding that Aloha Poke stop using “Aloha” and “poke” has garnered over 150,000 signatures.  Last week, hundreds of people gathered in protest outside the company’s Chicago headquarters.

In a statement on its Facebook page, Aloha Poke explained its reasons for sending the letters, indicated its respect for the Hawaiian culture, and apologized for “the confusion that this has caused.”

A company is wise to monitor and enforce its trademark rights.  And indeed, Aloha Poke’s potential claims against poke restaurants with similar names do not appear legally frivolous on their face.  But in terms of public image and even cultural awareness, Aloha Poke could have gone about its enforcement in a different way.

— Jessica Gutierrez Alm, Attorney

Twitter, the social media giant, is being sued by its internet cousin, TWiT.  TWiT, which initially stood for This Week in Tech, is a netcast network providing audio and video tech-related content.  TWiT owns the registered service mark TWIT for visual and audio entertainment performances.

According to the Complaint, TWiT founder Leo Laporte and Twitter co-founder Evan Williams had some discussions about the similar brand names in the mid-2000s.  The Complaint is available on Scribd, courtesy of TechCrunch.  In 2007, Laporte invited Williams on TWiT’s net@night show to promote Wiliams’s new company, Twitter.  Laporte alleges that although the two founders recognized their companies’ similar sounding names, at the time, they provided entirely different platforms—Twitter was text-based microblogging, and TWiT was video and audio streaming and downloading. The two founders apparently agreed informally that their companies would continue to coexist on their respective platforms.

Now, after ten years and still no formal agreement, Twitter is planning to launch original video streaming content.

Last year, TWiT sent a letter demanding that Twitter abandon its planned expansion into video content.  The parties’ subsequent attempts to resolve the dispute without legal action apparently have not been successful.

TWiT alleges twelve causes of action in total, including infringement of the TWIT mark.

Perhaps the moral of this story is: put it in writing (preferably more than 140 characters).  Presumably in Twitter’s early days, no one could have foreseen the future success of the social media platform and an eventual expansion into video content.  But maybe TWiT should have sought something more than a handshake coexistence agreement.  What do you think?

Moving along from Steve’s post on our alma mater of the University of Iowa, a former Rutgers football player has a more negative view of his former school. A few years ago, the Rutgers football program started allowing position groups to choose a nickname. The wide receivers are known as “Flight Crew,” the defensive linemen as “Rude Boyz,” and the offensive line was formerly known as “Soul Train.” Apparently the steam ran out though and the group chose a new name this year: “Rare Breed.” The players and the coaches use the name in social media like Facebook and Twitter. While Wild Turkey appears unconcerned, the new moniker has ruffled the feathers of John Ciurciu, a former Rutgers fullback who has now filed a trademark infringement complaint in the New Jersey U.S. District Court.

Ciurciu founded Rare Breed after he moved on from his playing career. According to the complaint, the company sells a variety of clothing and football gear, becoming popular among high school, college and professional football players. The complaint counts Adrian Peterson and Brian Cushing among NFL players that wear the brand. The company also designs custom apparel for student athletes at Coastal Carolina College. The company owns registered trademarks for the RARE BREED mark in standard character form as well as part of a design mark. The registered design mark is shown below on the left, and the image displayed on Rutgers social media on the right.

The complaint alleges that the use of the image above as well as the use of the hashtags in social media are all instances of trademark infringement and unfair competition. Rare Breed had earlier sent cease and desist letters to Rutgers. The university’s attorney responded by stating that the coaches had been directed to remove the images and hashtags from their social media. While some of the images were removed, some remained. Rare Breed sent a second letter and again the university’s attorney stated that the coach had been directed to remove the use.

It is worth noting that Rutgers has not sold any goods with the image above. However it seems that Rare Breed is concerned that players, especially recruits, might mistakenly believe that the team is sponsored by Rare Breed. The concern seems plausible, even if Rare Breed doesn’t have the same widespread recognition as bigger companies like Adidas or Nike. While we have to wait and see whether Rare Breed can prevail on its claims, one thing is certain. In the age of recruiting via social media, counsel for colleges and universities should discuss intellectual property and other social media issues with their football programs. The Rare Breed – Rutgers dispute is an excellent Exhibit #1. Without proper guidance, lawsuits like this will be anything but rare.

Some credit Donald Trump’s win to his savvy social media presence, including tweeting.  He reached millions of voters and caught the nation’s attention with his tweets.  The courts are now recognizing this phenomenon.

In a recent trademark dispute between a DJ and a rapper over the trademark “LOGIC,” the Sixth Circuit recently criticized a district court decision for being “incomplete and at times flawed,” because it failed to properly consider Facebook likes and other social media as proof of marketing.  The Court explained that “[p]romotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies.”  President Elect Trump would agree with this statement.

Specifically, the case involved a suit brought by DJ Lee Jason Kibler who performs under and owns the federally registered trademark “DJ LOGIC.”  See Kibler, dba DJ Logic, v. Hall, et. al, No. 15-2516 (6th Cir. Dec., 13, 2016). The DJ sued rapper Robert Bryson Hall, III (aka Logic”) for federal trademark infringement, federal trademark dilution, breach of the Michigan Consumer Protection Act and unfair competition.  In essence, the DJ thought the rapper’s use of the trademark would confuse fans, improperly trade on his good name and dilute his brand.  Last week, the Sixth Circuit granted summary judgment in favor of the rapper thereby shutting down the DJ’s lawsuit.  In assessing the likelihood of confusion, the Sixth Circuit examined eight factors courts routinely examine:  “1) the strength of the plaintiff’s mark; 2) relatedness of the products; 3) similarity of the marks; 4) evidence of actual confusion; 5) plaintiff’s marketing channels; 6) likely degree of purchaser care; 7) defendant’s intent in selecting the mark; and 8) the probability that the product lines will expand.”

The Sixth Circuit found that although the DJ had shown that DJ LOGIC was moderately strong conceptually, he had not offered evidence of the mark’s commercial strength.  Significantly, the DJ failed to provide survey evidence.  The Sixth Circuit pointed out the flaws in the district court’s analysis described above with respect to this factor.  Although the tweets and Facebook popularity should be considered, the DJ had failed to provide evidence of widespread recognition.  The district court’s analysis was incomplete because it concentrated only on “low album sales, current lack of a recording contract and inability ever to secure a recording contract with a major label.”  The Sixth Circuit explained that “[a]lbum sales and even recording contracts are less critical markers of success than before because of widespread internet use.”

Anyone heard of a guy named Justin Bieber who was discovered on YouTube?  Who hasn’t downloaded music from the iTunes store?  In fact, I am not even sure if my niece and nephew even own a physical album like the ones I purchased growing up.  Despite the district court ignoring this evidence, the DJ failed to provide the Sixth Circuit with enough evidence to persuade it that the DJ LOGIC mark was commercially strong.

The Sixth Circuit agreed that the relatedness of the products factor was neutral.  The products (e.g., DJ services and rapping) were somewhat related, but not directly competitive.  Only the rapper used his vocals.

The third factor weighed in favor of the rapper because when you examine “DJ LOGIC” as a whole DJ is the prominent feature.  As for the fourth factor of actual confusion, the DJ was favored only slightly with his ten instances of actual confusion.  These “ten instances paled in comparison to [the rapper’s] 170,000 album sales and his popularity on YouTube, Facebook and Twitter.

The fifth factor—marketing channels—was neutral even though the district court had underestimated the impact of widespread internet use.   The Sixth Circuit explained that there was “minimal evidence that the parties’ advertising methods or targeted customers substantially overlapped beyond shared use of congested Websites like Facebook and iTunes.”

 

The district court rightfully disregarded the likely degree of purchaser care.   Further, the district court properly found the intent factor to be neutral as there was no reason to believe he knew about the DJ before choosing his “LOGIC” mark.  Finally, the district court also found the likelihood of expansion to be neutral.  There was no proof that the DJ was going to become a rapper or vice versa.

 

This decision shows that social media needs to be considered in trademark disputes (and many other cases) and litigants need to come with proof to prevail.

Check out this City of Atlanta Facebook page.  The funny thing is that it’s not run by the City of Atlanta.  Although the posts are titled “City of Atlanta” and use the City’s official seal, the page consists of satirical humor composed by Ben Palmer, an Atlanta resident.  Although the first post was only a couple weeks ago, the page is quickly growing in popularity, with over 27,000 likes as of today.  For example, see the most recent post by the “City of Atlanta” about building another football stadium:

Atlanta Facebook Satire Photo1

Here are a couple other examples:

“We have invested 90 million dollars in a trolley system that will allow citizens to travel 10 whole blocks in a total of 3 hours.”

“Our homicide investigation unit has relocated to the inside of Kroger, next to the sample lady. Please be mindful of this as you do your grocery shopping.”

Two days ago, the actual City of Atlanta informed Ben Palmer that it did not find his page very funny.  More specifically, the City sent a demand letter to Mr. Palmer, informing him that the City had requested Facebook to remove any use of the City’s seal.  The City’s seal is a federally registered trademark (Reg. No. 3089604):

City of Atlanta Seal

The Facebook page uses a modified version of the seal, with the addition of a stylish top hat and a monocle:

14671230_662047237287512_7554220690476831254_n

The City’s demand letter stated:

“The owner of the satirical City Facebook page was not authorized to use the City’s trademark. We are working with Facebook to remove the City Seal and any other information on the Facebook page that might confuse or mislead the public into believing that the page or its contents represent the positions, policies or practices of Atlanta City Government.”

Mr. Palmer responded with some more tongue-in-cheek satire on the Facebook page, referring to his commonly invoked criticism of the city trolley:

“If you make a satirical Facebook page mocking the city of Atlanta, you will be charged with a serious crime that is punishable up to 3-5 years in prison or be force[d] to ride the trolley.”

In the two days since the City’s demand letter, Mr. Palmer has continued to use the City’s seal.  If the City decides to file an infringement lawsuit, it will raise interesting questions regarding satirical or parodying uses of trademarks.

In some courts, trademark parody or satire is not a defense per se to trademark infringement, but rather something to consider in the likelihood-of-confusion analysis.  For example, one court held that a trademark parody of baseball cards did not infringe because the effect was “to amuse rather than confuse,” and no one would mistake the Major League Baseball Player’s Association (MLBPA) “as anything other than the targets,” not the origin, of the parody cards.  Cardtoons, L.C. v. Major League Baseball Players’ Ass’n, 95 F.3d 959, 967 (10th Cir. 1996). Another court has stated that “[t]he strength and recognizability of the mark may make it easier for the audience to realize that the use is a parody and a joke on the qualities embodied” in the trademark. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002).  See also, for example, MasterCard Int’l Inc. v. Nader 2000 Primary Comm., No. 00 Civ. 6068, 2004 WL 434404 (S.D.N.Y. Mar. 8, 2004) (concluding that Ralph Nader’s “priceless” political ads did not infringe MasterCard’s trademarks).

Other courts apply a parody/satire distinction similar to the fair use analysis in copyright cases (see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577–78 (1994)), under which courts may hold that parodies are less likely to infringe a trademark than satires.  Some commentators have criticized the creep of the Campbell copyright fair use test into trademark case law, stating that “reliance on Campbell to aid trademark infringement analysis tends to obscure the ultimate issue in any infringement case: the likelihood of confusion.”  Bruce P. Keller & Rebecca Tushnet, Even More Parodic than the Real Thing: Parody Lawsuits Revisited, 94 Trademark Rep. 979-1016 (2004).  Keller and Tushnet further explain:

“[T]he parody/satire divide is unhelpful in addressing the central question in trademark infringement cases: whether the defendant’s use is likely to cause confusion among a substantial number of consumers. If a joke is recognizable as a joke, consumers are unlikely to be confused, and whether the butt of the joke is society at large, or the trademark owner in particular, ought not to matter at all.”

Here, it appears that Mr. Palmer’s Facebook page could have elements of both parody (modifying the City’s seal by adding a top hot and a monocle) and satire (making humorous criticisms of the City through the posts), which could lead to an interesting analysis if a lawsuit arises.  Stay tuned to see how this situation develops.

 

Instagram recently released a new feature called Instagram Stories, which allows users to curate a collection of photos or videos of moments to share with friends for them to view, but then it disappears after a day.  The thing is Snapchat, a competing photo sharing app, already had a feature called Stories, which allows users to curate a collection of photos or videos of moments from the past day to share with friends for them to view.  Mashable has a nice post comparing the two features and identifying some of their differences.

So, can Instagram have Instagram Stories and call it that when Snapchat Stories already exists?

The answer, as it often is in the law, is “it depends.”

On the trademark side, neither Snapchat nor Instagram seems to have filed a trademark application for their respective Stories marks, with or without their house brand.  Notwithstanding that though, Snapchat has been using Stories since at least 2013 and would have prior trademark rights to STORIES over Instagram, which was just released this year.  However, they would only have those rights if STORIES actually functions as a trademark, rather than being a generic term.  A trademark can be generic if it becomes the common word or term used to identify a particular product or service regardless of source.  Examples of this include aspirin or elevator.   Trademark owners risk their trademarks becoming generic by their own improper use of the mark, like by using the mark as a noun rather than an adjective next to a generic term for a product (e.g. KLEENEX® tissues).  They can also become generic by failure to properly police the use of the mark by consumers or the media.

There could also be some issues for Instagram on the patent side.  Snapchat owns at least U.S. Patent No. 9,026,943, which has the following claim:

1. A computer implemented method, comprising:

allowing a user to access a user-controlled social network profile page with posts in a specified order;
permitting a user to traverse an interface element across the posts in the specified order to establish a set position for the interface element;
providing access to posts on a first side of the set position for the interface element to define a viewable profile; and
blocking access to posts on a second side of the set position for the interface element to define a non-viewable profile, wherein blocking access to posts includes blocking access to posts observed by social network members associated with the user, while the user has access to posts on the first side of the set position and the second side of the set position.
If Instagram’s Instagram Stories feature practices each and every element of this claim, it would infringe Snapchat’s patent, assuming of course that the patent is not somehow invalid – a defense that would certainly be brought by any alleged infringer.  It’s also possible that Instagram designed its Instagram Stories feature around claims of Snapchat’s portfolio, which may explain why the order of displaying friends’ posts to a user is different and other differences between the apps.
Instagram is owned by Facebook, which has a history of mimicking features of Snapchat in its applications as this article from 2014 discusses (see this 2016 update as well).  We’ll have to wait and see if this is the final chapter of this ongoing saga between social media app giants.

Debbie Laskey, MBA

These days, as newspapers and magazines are on the wane, it seems as if anyone who can write has become an online journalist to promote his or her area of expertise. In social media lingo, the title is now known as a “blogger.”

According to Wikipedia, “A blogger is a person who keeps a blog as a major activity in his or her life…Many blogs provide commentary on a particular subject; others function as more personal online diaries; others function more as online brand advertising of a particular individual or company. A typical blog combines text, images, and links to other blogs, Web pages, and other media related to its topic. The ability of readers to leave comments in an interactive format is an important contribution to the popularity of many blogs.”

Since a blog is an important element of an overall social media marketing plan that may include sites such as Facebook, Twitter, LinkedIn, Instagram, and Google Plus, it’s important to consider how the blog’s theme and content reflect a business’ or individual’s brand. Does the blog’s voice reflect the brand in a consistent manner? And, most importantly, who reviews the content before posting it live? Does only the Marketing Department review the content? Or, do the Public Relations, Technology, and Legal Departments also review the content?

There are some actions you can and should take to protect your content. First, set up daily alerts with Google Alerts and TalkWalkerAlerts with keywords such as your brand or brands, business name, and blog title. This way, you will receive immediate notification when and/if your content appears on an unknown website. Second, check out the US Government’s copyright site to answer a myriad of questions about copyrights for online content. And third, make sure to add a copyright symbol at the end of all blog posts and on all web pages.

In the words of Oleksiy Synelnychenko of IP WatchDog, “Under the DMCA or Digital Millennium Copyright Act, all content published online is protected under copyright law [because] any content, no matter the form it takes (whether digital, print, or media), is protected under copyright law.”

So, keep up the great writing, aka, blogging – just do your due diligence to protect your content.

In addition of course to good beer and good friends, a good bar for me is defined by a good game: photo hunt (the NSFW version) and foosball at Murphy’s, bar olympics at Steny’s (where I dominated at the tricycle races), volleyball at Fat Daddy’s, bocce ball in the basement of Half Time Rec, lawn bowling at Brit’s, and lately a surprisingly competitive trivia night at New Bohemia.  Some of these teams even have their own Twitter handles and use the same name every week to indicate the source of their trivia talents – I guess I’d better start handing out my card on trivia night.

One game I have not seen much at bars in the Twin Cities and Milwaukee is skee ball. I think the last time I played skee ball was at a Circus Pizza or a Chuck E. Cheese.  It wasn’t until I read about Skee-Ball Inc.’s dispute with competitive skee-ball league Brewskee-Ball that I learned that SKEE-BALL is a registered trademark for “game in the nature of a bowling game.”  In 2011, Skee-Ball sued the operators of Brewskee-Ball for trademark infringement in a case that is still pending.  Despite raising an affirmative defense that the term is generic in its answer to Skee-Ball’s complaint, earlier this month, Full Circle United, LLC (which operates the Brewskee-Ball league)  filed a petition to cancel the SKEE-BALL trademark with the TTAB as being a generic term.

Prior to the lawsuit, a federal registration was obtained for the mark BREWSKEE-BALL  for “entertainment in the nature of skee-ball games; entertainment services, namely, arranging and conducting of skee-ball competitions; providing a website that provides statistics for skee-ball league players; providing recognition and incentives by the way of awards to demonstrate excellence in the field of skee-ball.”

Surprisingly, the identification for the registered mark includes the registered term “skee-ball.”  Under the trademark rules, the identification is supposed to list generic terms for the goods or services and it is “inappropriate to use a registered mark to identify a kind of product or a service, because such a mark indicates origin in only one party and cannot be used to define goods that originate in a party other than the registrant.”  TMEP 1402.09.  The Trademark Office is supposed to look for this when accepting identifications of goods and services, but no objection was made.

As it fights Skee-Ball now in court and at the USPTO, Brewskee-Ball has joined the recent trend that we’ve seen with other smaller fish arguing trademark rights with a bigger fish like FiftyThree with Facebook over PAPER, Exit 6 Pub and Brewery and StarbucksCafé Roubaix Bicycle Shop and Specialized.  And they’re raising revenue for their legal battles through crowdfunding and anti-establishment swag.   While Exit 6 Pub got a lot of attention for changing its Frappicino beer name to simply The F Word, Brewskee-Ball’s take has the most aggressive tone that I’ve seen.  The Brewskee-Ball Twitter background reads in a graffiti font  “THERE’S NO WAY TO SAY SKEE BALL EXCEPT SKEE BALL” and their skeethepeople.com website features an interesting take on Lady Justice, with uneven weights on her scale of justice.

 

It’s clearly safe to say that this trend is not going away anytime soon.  It’s relatively cheap to set up a website, get a Twitter handle, tweets some hashtags, and generate some sympathetic noise about your trademark dispute.

And while we’re probably not quite there yet – at what point do the bullied become the bullies?

#SKEETHEPEOPLE #Twitteractivism #notgoingaway #itsfriday #enjoytheweekend #iloveJimmyFallon #classic

 

On the cusp of its 10 year anniversary, Facebook announced the “Facebook Paper” app – a combination of social networking and content feed that seems strikingly similar to one of my favorite apps Flipboard, with some of the Facebook features included in the app.  While there may be a patent dispute on the horizon there, first up is a trademark dispute ignited on the day of the announcement.

 

If you follow tech-related blogs, you have probably heard that after the announcement of the app, Paper by FiftyThree, another highly popular smartphone and tablet application that allows you to write and draw with a stylus, was a little jilted by Facebook’s use of PAPER.

As we have seen more and more lately (like here and here), the “little guy” FiftyThree took to their blog as a platform for their dispute to fight against the Goliath.  The post indicates some evidence of confusion by consumers and the press, thinking that Paper by FiftyThree had been bought by Facebook.  The post also mentions some fairly strong ties already between FiftyThree and Facebook and that Paper by FiftyThree supports sharing to Facebook.   And, the post uses the dirty “bully” word to describe what Facebook might become with these tactics.

In an effort to protect its rights in the wake of Facebook’s announcement, FiftyThree smartly filed a use-based trademark application for PAPER for “computer application software and services for smart phones and tablets, namely, software for use in writing on smart phones and tablets with either a stylus or finger; computer application software and services for creating, editing, and compiling content to share with others via a social network; computer graphics software; computer hardware and computer software programs and services for the integration of text, audio, graphics, still images, and moving pictures into an interactive delivery for multimedia applications.”    They already have a registration for PAPER BY FIFTYTHREE for “computer application software for smart phones and tablets, namely, software for use in writing on smart phones and tablets with either a stylus or finger.”

Surprisingly, I could not find a pending trademark application for FACEBOOK PAPER or PAPER applied for by Facebook as of today.  Given the strong ties between the companies, it would likely be hard for Facebook to claim they were unaware of FiftyThree’s use of PAPER.  There are, however, over 150 pending applications and active registrations incorporating PAPER for goods and services relating to computer software and/or social  networking, which lends credence to an argument that the term is diluted in the relevant industry.  And by all accounts, it does not look like Facebook will be caving anytime soon to FiftyThree’s demands to change their name.

The dispute here is somewhat analagous to the SATURDAY dispute between SATURDAYS NYC and KATE SPADE SATURDAY, where a court ultimately determined that despite actual confusion by consumers, Kate Spade did not infringe Saturdays NYC’s trademark because SATURDAY was relatively weak in the apparel industry, the distance between the products, and the inclusion of the famous mark Kate Spade.

One takeaway from this latest public trademark spat is yet another reminder to encourage communication between your legal team and your marketing team, especially prior to launching a new product.  This dispute has overshadowed Facebook’s advancements in their technology and their services.  You have the chance to drive the narrative when you have a thoughtful legal, marketing, and PR strategy.

Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP

Social media companies are some of the biggest growth businesses out there and the very nature of their businesses is global. One of the stronger performers is Pinterest, which offers an online platform to manage images and other content on an online pinboard. As recently as October 2013 it was reported to be valued at USD 3.8 billion. It has also had some success in stopping others from using the name or variations of it in the USA.

Europe is, however different. A recent ruling from the European Trade Mark Registry has caused Pinterest a headache. Pinterest, which had been founded in March 2010, applied to register Pinterest as a trade mark in the European Union in February 2012. However, a UK company, Premium Interest Limited had already applied for a trade mark for Pinterest in January 2012.

Pinterest opposed this application relying on its earlier use of Pinterest it probably thought that it would easily win. However, the European Union Trade Mark Registry rejected the opposition. The big issue? While Pinterest could produce evidence showing that it had significant use in the US, it had failed to show sufficient earlier use in the European Union to prevent Premium Interest Limited’s trade mark application from proceeding. Without this the opposition failed.

What next? Pinterest can appeal, but proof of earlier rights is a factual issue and if the European Trade Marks Registry did not consider that Pinterest had put in enough evidence to show earlier rights in Europe it will be difficult to put in further evidence as the Appeal process only allows fresh evidence in exceptional circumstances. This leaves Pinterest potentially liable for trade mark infringement in the European Union for using the name of its business. No claims can be made until Premium Interest’s mark proceeds to registration and the appeal process in Europe can take between 2 – 5 years so Pinterest may have time on its side at least.

The other options are for Pinterest to either buy or take out a licence for the mark, but this is likely to have a high price tag. Pinterest may, however have little choice – a business, particularly an online social media business, can’t trade under one name in one country and another in another country. At best impracticable – at worst impossible. But how practical is a rebrand at this stage?

The moral of the story is that Pinterest could have avoided all these issues if it had applied to register its trade mark in Europe earlier. A month can be a very long time in the world of trade marks!