ORDER DENYING MOTION TO DISMISS
I. INTRODUCTION
In this dispute between two entities offering online bookmarking services, plaintiff Pinterest Inc. asserts claims for relief under federal and state law for trademark infringement, false designation of origin, trademark dilution, and unfair competition. Defendant Pintrips Inc. moves to dismiss the complaint in its entirety, arguing Pin-terest has failed to state a claim upon which relief can be granted. The central thrust of Pintrips’ motion is the contention that Pinterest cannot, as a matter of law, seek to exclude others from using the term “pin.” In particular, Pintrips argues that “pin” is generic and therefore not entitled to protection under federal or state trademark law. Because deciding whether a mark is generic requires a fact-specific inquiry that generally is premature at the pleading stage, Pintrips’ motion must be denied.
II. BACKGROUND
A. Pinterest
Pinterest, an entity founded in early 2010, provides online services through its website, www.pinterest.com.
A “pin,” according to Pinterest, is the platform’s “foundational element.” (Compl. ¶ 9). Each piece of content posted on Pinterest is known as a “pin.” Users, in turn, are referred to as “pinners.” According to Pinterest, the “Pin It” button has played an important role in the site’s success. In addition to appearing on Pin-terest’s website, the “Pin It” button can be found on hundreds of thousands of other websites across the Internet. More specifically, the button appears alongside content — e.g., photographs, articles, for-sale items — displayed on various websites. By clicking the “Pin It” button when browsing
Although its users post and share a wide variety of content, Pinterest claims to have made a “particularly big splash” when it comes to travel-based content. (Compl. ¶ 13). The complaint avers that, to date, Pinterest users have posted more than 660 million “pins” in Pinterest’s “Travel” category. Id. “Many people use Pinterest as a travel-planning tool — for example, to collect inspiration for upcoming trips[.]” Id. Allegedly due to the platform’s popularity in the “area of travel,” numerous airlines, hotels, resorts, travel planning companies, and travel media outlets promote their services on Pinterest. (Compl. ¶ 14).
Pinterest claims it pioneered the use of “pin-formative” terms in the context of social media and online bookmarking. It further avers that the public associates these terms with Pinterest, and that the terms have “become famous in relation to Pinterest’s goods and services.” (Compl. ¶ 9). In support of this averment, Pinter-est claims its site is one of the twenty most popular websites in the United States and the third most popular such social networking site.
B.Pintrips
Pintrips Inc., founded in August 2011, provides online services through its website, www.pintrips.com. Pintrips describes itself as a “personal travel planning dashboard” where users collect, compare, and share information about airline travel. (Compl. ¶ 20). Pintrips employs a “pin” button to enable its users to bookmark content pertaining to flights and travel.
C. Pinterest’s Asserted Rights
Pinterest claims to have used the “Pin-terest” trademark in commerce since March 10, 2010. It has also allegedly used the Pinterest logotype trademark in commerce since May 3, 2011. In addition, Pinterest holds a registered federal trademark for the mark “Pinterest” in connection with certain goods and services.
D. Procedural Background
Pinterest filed this action on October 4, 2013. Its complaint asserts five claims for relief: (1) trademark infringement in violation of 15 U.S.C. § 1114; (2) false designation of origin in violation of 15 U.S.C. § 1125(a); (3) trademark dilution in violation of 15 U.S.C. § 1125(c); (4) unfair competition in violation of Cal. Bus. & Prof. Code § 17200, and (5) trademark infringement in violation of Cal. Bus. & Prof.Code § 14257. Each claim is premised on the allegation that Pintrips engaged in author
III. LEGAL STANDARD
A complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed. R.Civ.P. 8(a)(2). While “detailed factual allegations are not required,” a complaint must have sufficient factual allegations to “state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal,
A motion to dismiss a complaint under Rule 12(b)(6) of the Federal Rules of Civil Procedure tests the legal sufficiency of the claims alleged in the complaint. See Parks Sch. of Bus., Inc. v. Symington,
IV. DISCUSSION
Defendant’s motion fails for two reasons. First, a motion to dismiss is not the appropriate vehicle by which to determine the fact-specific issue of whether “pin” is a generic, and therefore unprotectable, mark. Second, even if “pin” could be deemed unprotectable at the pleading stage, defendant’s motion largely ignores that each of plaintiffs five claims proceeds on an additional theory unrelated to Pin-terest’s alleged ownership of the “pin” mark.
A. Pintrips’ Request for Judicial Notice
Pintrips’ motion is accompanied by a raft of documentary exhibits.
A court only may take judicial notice of facts that are “not subject to reasonable dispute.” Fed.R.Evid. 201(b). Here, defendant offers extrinsic documents for one purpose only: to demonstrate that the mark “pin” — as used by plaintiff, defendant, and numerous third parties — is generic. Id. This is, of course, entirely improper. First, while “undisputed matters of public record” are judicially noticeable, a court may not take notice of disputed facts in public records. Lee,
Accordingly, to the extent defendant seeks judicial notice to demonstrate that the “pin” mark is generic, the request is denied.
B. Is “Pin” a Protectable Mark?
To state a claim for trademark infringement, false designation of origin,
Plaintiff avers that “pin,” as used by Pinterest, is a suggestive mark automatically entitled to trademark protection. In the alternative, it contends “pin” is a descriptive mark that has acquired distinctiveness through secondary meaning. Defendant disagrees, arguing “pin” is a generic and functional term that merely describes what users do, like “pin a location on a map, pin a contact on a taskbar in Windows, or pin a flight.” (Motion to Dismiss, EOF No. 16, 6:15-16) (emphasis in original). Analogizing to other circumstances where users engage with an interface by employing certain task-based “directives,” defendant argues the parties’ use of “pin” is no different from other platforms’ use of terms like “cut,” “paste,” “like,” “print,” “send,” “close,” and “delete.” (Defendant’s Reply, ECF No. 26, 2:2-3). Defendant argues that Pinterest’s use of “pin” does not indicate the source of its product. See KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc.,
“Which category a mark belongs in is a question of fact.” Zobmondo,
While some courts have decided fact-specific issues regarding trademark protection at the pleading stage, they general
Defendant further contends that even if “pin” is protectable, plaintiff nonetheless cannot own the mark because it is not the mark’s senior user. See Sengoku Works Ltd. v. RMC Int’l, Ltd.,
C. Plaintiffs Other Theories of Liability
Additionally, defendant’s motion fails to address the fact that all five of plaintiffs claims also proceed under the theory that defendant’s use of the “Pin-
V. CONCLUSION
For the foregoing reasons, defendant’s motion to dismiss is DENIED. A further case management conference is set for March 13, 2014. The parties are directed to file a joint case management statement no later than March 6, 2014.
IT IS SO ORDERED.
Notes
. The factual background is based on the averments in the complaint, which must be taken as true for purposes of a motion to dismiss.
. Pinterest's services are also available via applications designed for Apple and Android mobile devices. For the sake of simplicity, this order will refer to Pinterest as a "website” or "site.”
. In particular, Pinterest holds U.S. Registration No. 4,145,087 for the mark “Pinterest” in connection with "providing a web site featuring technology that enables internet users to create, bookmark, annotate, and publicly share data” in class 42 and "internet based social networking services” in class 45. In addition, it has filed an application to register the mark in connection with additional classes of goods and services.
. While the complaint repeatedly contends that Pintrips used other "pin-formative” marks, it does not specify the marks to which it refers.
. The exhibits were first submitted alongside a declaration from Pintrips attorney Scott Tolchinsky. (ECF No. 16). Several weeks later, defendant lodged a formal request for judicial notice. (ECF No. 28).
. Plaintiff, too, filed a request for judicial notice. (Request for Judicial Notice in Support of Pinterest, Inc.’s Opposition to Defendant’s Motion to Dismiss, ECF No. 24). Like defendant, plaintiff requests judicial notice of various USPTO filings. It also requests notice of documents showing it registered the “pin” mark in various foreign countries. As with the official documents submitted by defendant, plaintiff's documents are noticeable only for the limited purpose of demonstrating that certain filings and actions occurred on certain dates. They are not, however, noticeable to show that plaintiff’s mark is distinctive or not generic.
. Here, unlike in Toho, plaintiff's and defendant's products are far from being "unrelated as a matter of law.” Toho,
. Indeed, only two claims — the second claim for false designation of origin under the Lan-ham Act and the fourth claim for unfair competition under California law — request relief on the basis that "pin” is a protectable mark owned by Pinterest. The first, third, and fifth claims, by contrast, allege only that defendant violated plaintiff’s rights in its federally-registered "Pinterest” trademark. Although the first, third, and fifth claims allude to defendant’s use of, among other things, the "pin” mark, they plead only that such use violates plaintiff's "Pinterest” mark.