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Pinterest is a social sharing web site.

https://pinterest.com

I have created a software that helps users to share photos online to Pinterest easily and quickly.

https://addons.opera.com/en-gb/extensions/details/shareaholic-for-pinterest/

It is named Shareaholic for Pinterest. It is free.

Today I got a trademark notice from Pinterest lawyers that the software should be removed because it is using the Pinterest trademark.

Other than the name of the software there is no trademark usage. And the naming also follows the for convention like

"gadget for iPhone"

or

"tool for Microsoft"

There is a proper disclaimer also that states the software is not affiliated with Pinterest in any way.

There is no icon or logo or any other design assets that belongs to Pinterest Inc.

So, rather than the name of the software or any other possible issues, Pinterest lawyers are trying to take the software by simply it is a utility for their service.

But I wanted to ask that can a trademark owner prevent any other person/company to create software for its trademark just simply for they do not feel like it?

BTW, there are hundreds of software out there for Pinterest that still exists, even they are using logo of the Pinterest and some even claim the software belongs to Pinterest.

What is my option now? Should I just take down the software just there is a Pinterest phrase in the name of the software which is Shareaholic for Pinterest?

3

I would refer you to I Received a Letter/Email. . . from the USPTO website.

Generally though you should be careful about using another company's trademark as part of your product's name. A less risky option would be to name your product Shareaholic and then in the subtitle or description write for use with Pinterest.

The point of trademarks is to prevent consumers from confusing the source or sponsorship of a product or service. If you were in court, the central question would become "would a consumer reasonably be confused whether Shareaholic for Pinterest was made by or approved by Pinterest?" And you have to remember, most consumers don't read small print such as "not affiliated with Pinterest". Lots of visitors to Pinterest and by extension users of your software may be children or elderly and computer-illiterate.

You may also want to read "How do I know whether I'm infringing" at the USPTO website.

  • Thank you for help. I am always respectful for the laws and to the rights of the other people and companies. In no way, I try to infringe their trademark. It is just a convention actually that most software authors recommends. If it is for Facebook you use "Tool for Facebook", if it is Pinterest you use "Tool for Pinterest". Actually I have seen many companies allows and encourages this kind naming even in their official website. I will remove the Pinterest phrase as you suggested. But should not "for" nomination be regarded as Nominative use ? – John Bernard Feb 14 at 13:12
  • And there is also Fair Use. As again "for Pinterest" is there only to imply that the software is for Pinterest users. Otherwise users will not grasp what is the software is used for. – John Bernard Feb 14 at 13:14
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    Only a judge could decide whether a nominative fair use defense is appropriate. But I would think that doctrine is more fit for defense of vernacular than a product name - for example this would be a good defense if you were sued for saying for use with Pinterest in the description (see New Kids on the Block v News Am Pub). – Max Feb 14 at 14:35
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    You have a little support in Volkswagenwerk AG v Church, but as noted by Judge von der Heydt: "...in the light of the particular circumstances, Church's prominent use of the word "Independent" whenever the terms "Volkswagen" or "VW" appeared in his advertising was sufficient to distinguish his business to the eye of the customer..." – Max Feb 14 at 14:35

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