opinion

Loss of Pinterest Trademark in the E.U. Holds Lessons for Adult Companies

Everyone has heard of Pinterest, right? Well who do you think owns the trademark to "Pinterest”? The answer depends upon which country you're in, and it might surprise you.

An enterprising company, Premium Interest, that does appear not to do much yet, (except presumably register trademarks belonging to other companies) managed to convince the E.U. OHIM (the equivalent of the U.S. Patent and Trademark Office) that it had never heard of Pinterest, and that it has superior rights to the mark in Europe. As a result, Premium Interest now owns the Pinterest mark in the E.U., and Pinterest has lost the ability to register or enforce its trademark there. Now, it faces a long and uncertain legal battle.

Pinterest’s current E.U. woes serve as a very good cautionary tale for adult businesses, which are notoriously lackadaisical about protecting their trademarks, and it should stand as a reminder that there is a big world beyond the oceans.

Pinterest’s current E.U. woes serve as a very good cautionary tale for adult businesses, which are notoriously lackadaisical about protecting their trademarks, and it should stand as a reminder that there is a big world beyond the oceans.

Pinterest launched its website in March of 2010, but for some reason it decided to wait until March of 2011 to file its U.S. trademark. This was its first bad move, but such a delay is slightly less foolish in the U.S. than it is in other countries.

Since the U.S. recognizes the "first to use" a trademark as having superior rights, it is possible to get rid of a pretender's trademark registration if necessary. That being said, it is far more expensive and time consuming to defeat a usurper than to apply for registration when a mark is selected. As they say, "an ounce of prevention is worth a pound of cure." If you register your trademark with the USPTO, the filing fee is $275 or $325, depending on how you file it. Attorneys fees are usually $1,000 or less. Nevertheless, countless companies decide to shelve the idea until "later," either because they think they can do it any time, or they do not see it as a priority. While they procrastinate, another enterprising company may pay the filing fee and then get in line in front of them. Then, the legitimate trademark owner can shell out tens of thousands of dollars in an opposition or cancellation proceeding - simply trying to get back what it rightfully owns, and what it could have secured much more cheaply and quickly. Of course, there is always the real nightmare scenario — that even if they spend the money to oppose or cancel, they lose anyway.

Getting back to Pinterest, we have already determined that it was foolish to delay registering in the U.S. for so long. Despite its delay, Pinterest managed to dodge one bullet, and nobody applied to register the mark while it sat on its hands. However, in Europe, "Premium Interest" was crafty enough to do so. Premium Interest filed for an EU trademark registration, and thus Pinterest was forced to oppose it. But, since the EU regards the first to file as the one with the superior claim to the mark, Pinterest had to prove that it owned prior unregistered rights. Doing that is not impossible, but it is an evidence-intensive task. What that means to a mark owner is that it costs a lot of money, and it adds unnecessary uncertainty to the process.

The OHIM Opposition Division ruled that the evidence was insufficient to prove prior rights in Europe, and thus Premium Interest is now the proud owner of trademark rights to "Pinterest" in the EU. Pinterest spent significant funds only to lose, and must even pay Premium Interest's costs in the action. Pinterest is likely to appeal, but the procedure does not allow it to submit additional evidence. Given that the evidence submissions were not sufficient the first time around, it may find frustration on appeal as well.

It is possible that Pinterest could have won at the OHIM, had it submitted better evidence. However, there is another way Pinterest could have won. Remember how it waited for a year to file their U.S. trademark? Had Pinterest filed sooner, it would have had a priority right relating back to the date of application of the U.S. registration. This is a right it has due to Article 4 of the Paris Convention for the Protection of Industrial Property, as under that treaty, anyone who files for a trademark in one member country has a six-month priority period in which to file in any other Paris Convention country. Since Pinterest didn't apply in the U.S. until March of 2011, it would have had to wake up to its E.U. problem by October of that year. If it had, it still could have blocked Premium Interest, who didn't try and apply in the EU until 31 January 2012. One simple registration in the U.S.A., plus some additional fees, and Pinterest could have avoided its current mess.

I hate to keep bashing Pinterest for being foolish, but there is another international agreement that makes their failure to act look even worse -- the Madrid System, which is comprised of two separate treaties, the Madrid Agreement and Madrid Protocol. Under this System, trademarks registered in any signatory country can be very easily recognized in all other member countries, and even a pending application in one country can be used to initiate protection in another. This may sound complicated, but it is anything but. Under the Protocol, once you file for a trademark in the U.S., you can use a simple web form, check a few boxes, pay a filing fee, and get the registration secured from Albania to Zambia (https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf).

So what does this mean for you, as an adult business owner? First of all, if you have not registered your trademark, go look in the mirror and check and see if you look stupid. If you do, then perhaps you should just go sit back on your couch and wait for some unscrupulous infringer to start stealing your name, your traffic, and your valuable intellectual property rights. Go ahead, watch Miley Cyrus or whatever idiots do instead of making money.

If you do not look really stupid, then you should pick up your phone and call your lawyer right away -- ask him or her why he hasn’t told you to protect your rights. If he says "what's that?" then call a lawyer who does intellectual property law and ask *that lawyer* to help you register your mark in as many countries as possible.

I can guarantee you that if your business has a brand worth protecting, then someone out there is already trying to figure out how to rip you off. That someone may be in another country -- one with a "first to file" system. If they are in a first to file country, and you sit there and say "I'll get around to it later," then you will likely find out, just like Pinterest did, that sitting on your ass is not to your advantage.

Marc J. Randazza is the managing partner at Randazza Legal Group. The firm has offices in Las Vegas and Miami, both specializing in intellectual property, First Amendment and Internet law. The author recently completed an LLM degree in international intellectual property Law administered by the World Intellectual Property Organization and the University of Turin Faculty of Law in Italy.

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