Upwork Can Use the Term “Freelancer” to Describe an App for Freelancers

In Freelancer International Pty Ltd v. Upwork Global, Inc., the Ninth Circuit recently (June 22, 2021) affirmed the Northern District of California’s denial of a preliminary injunction against Upworks’s use of Freelancer’s registered trademark FREELANCER in the name of its app “Upwork for Freelancers.” Upwork had apps for it clients, called Upwork for Clients and an corresponding app for the freelancers it placed called Upwork for Freelancers:

Once downloaded to a device, Upwork’s “Upwork for Freelancers” provides its display name, listed beneath the app’s “Up” logo icon, as “Freelancer” on iOS devices and as “Freelancer-Upwork” on Android devices — This is what Freelancer objected to.

The district court found that Freelancer lacked the required likelihood of success. Upwork argued that its use of “freelancer” was a fair use under 15 USC 1115(b)(4). The district court said that the fair use defense is applicable in instances where defendants’ alleged infringing use of plaintiff’s mark “is a use, otherwise than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.” The court noted that defendants submitted evidence showing (1) defendants use the word “freelancer” to describe their users and (2) the word “freelancer” is well-known and defined as “someone who is not permanently employed by a particular company, but sells their services to more than one company.” The court found that plaintiffs did not offer a persuasive refutation of defendants’ fair use argument, dismissing the fair use defense as inapplicable because plaintiffs do not challenge defendants’ use of the word “Freelancer” where it is not used “as a mark.”

The court discussed and rejected Freelancer’s arguments, finding that the instances in which Upwork allegedly uses “freelancer” as a mark are proper and descriptive uses of a common word distinguishing Upwork’s freelancer app from its client app. The Court was not persuaded that bold font and a capital letter are sufficient to show defendants use “Freelancer” as a mark versus a descriptive term – especially when Upwork’s distinctive lime green logo or coloring is placed directly alongside the various notifications. The Court noted that Upwork did not list the word “Freelancer” among its own publicly listed trademarks, nor did Upwork implement a stylized font or “TM” symbol when using the word “Freelancer.”

Based on the current record, the court found that Upwork does not use “freelancer” as a mark, rather, Upwork’s used the word in good faith to describe its users, and thus the court agreed that the defendants’ use of the word “freelancer” satisfies the requirements of fair use under 15 U.S.C. § 1115(b)(4).

The 9th Circuit concluded that the district court did not abuse its discretion by concluding that Freelancer could not carry its burden to show likely success on the merits.

The case provides some helpful guidelines to companies trying to use a registered mark descriptively: Avoid presenting the mark in a stylized font and avoid identifying the term with a TM. Capitalization and bolding are not enough to change this, at least where the user’s trademark is also prominently displayed. The case also provides a helpful reminder to brand owners: The more descriptive your mark, the more likely a third party use of the term will be found to be a descriptive use.

Descriptive Use or Infringement?

It was not April Fools joke — JaM Cellars, Inc. sued The Wine Group LLC for trademark infringement and unfair competition, complaining that Franzia’s BOLD & JAMMY boxed wine infringes their JaM trademark:

and Franzia’s RICH & BUTTERY wine infringed JaM’s BUTTER wine:

JaM’s name is a mash-up of the owner’s names:


while BOLD & JAMMY is arguably a description of Franzia’s wine, “jammy” (according to wikipedia) being a common descriptor: “Jammy: A wine that is rich in fruit but maybe lacking in tannins.” Is Franzia describing, infringing, or both?

Butter is arguably descriptive of JaM’s Butter Chardonay. JaM says:

According to wikipedia, Buttery, like jammy, is a common descriptor of wine: “Buttery: A wine that has gone through malolactic fermentation and has a rich, creamy mouthfeel with flavors reminiscent of butter.”

Again the question is whether Franzia is describing its product, infringing JaM’s marks, or both.

Franzia’s biggest vulnerability may come from the change in its packaging, which JaM attributes to an intent to trade off of JaM’s good will:

Both parties may need to brush upon

Both sides may need to brush up 15 USC 1115(b)(4), which provides:

That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin

Federal Circuit agrees that CORN THINS and RICE THINS are least Merely Descriptive

In Real Foods Pty., Ltd. v. Frito-Lay North America, Inc., [2017-1959, 2017-2009] (October 4, 2018), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the TTAB’s decision that the Real Foods marks CORN THINS and RICE THINS  were merely descriptive and have not acquired distinctiveness.

Real Foods argued that the marks are merely suggestive, and not descriptive, and even if they are descriptive, they have acquired secondary meaning.  The Federal Circuit agreed with the TTAB that the marks were merely descriptive.  When determining whether a mark is merely descriptive, one must consider the commercial impression of a mark as a whole, viewed through the eyes of a consumer.  One must consider the mark in relation to the goods for which it is registered, asking whether someone who knows what the goods and services are will understand the mark to convey information about them.  The Federal Circuit found that substantial evidence supports the TTAB’s finding that the proposed marks are highly descriptive, noting that “corn” and “rice” are grains from which the products are made, and “thins” describe the physical characteristics of the products.  Viewing the marks as composites does not create a
different impression.

The Federal Circuit rejected Real Foods arguments about the source of evidence of public understanding of its marks, noting evidence of the public’s understanding of [a] term may be obtained from any competent source.  The Federal Circuit also rejected Real Foods’ arguments that the TTAB failed to properly consider third party registrations containing “THINS,” noting that these did not compel registration, because each application must be examined on its own merits.

The Federal Circuit also found that substantial evidence supported the TTAB’s finding of a lack of acquired distinctiveness.  To determine whether a mark has acquired secondary meaning, courts consider: advertising expenditures and sales success;
length and exclusivity of use; unsolicited media coverage; copying of the mark; and consumer studies.   Real Foods’ sales and advertising figures weigh against a finding of acquired distinctiveness.  Further Real Foods spent a relatively small amount on advertising as compared to other expenditures.  Finally, research conducted
by a third party on behalf of Real Foods demonstrates that consumers have low brand loyalty to and low preference for Real Foods’ corn and rice cakes, as compared to
its competitors.  Frito-Lay’s evidence showed low recognition of the terms are marks.

The Federal Circuit rejected Real Foods’ argument that the TTAB ignored evidence of substantially exclusive and continuous use, find that the TTAB expressly acknowledged the evidence, and was within its discretion to discount it.  As to other evidence, this too was within the TTAB’s right to weigh evidence, and declined the the invitation to re-weigh the evidence.

The TTAB dismissed Frito-Lay’s claim that CORN THINS and RICE THINS are generic.  Frito-Lay argued that the TTAB improperly narrowed genus of the goods and services, tracking Real Foods’ amendment to the description of goods, which related to the species of goods, rather than considering the genus.  Accordingly, the Federal Circuit remanded for the TTAB to reconsider its selected genus and conduct its genericness analysis in light of that genus.




When is July 4 this year? When is North Carolina’s FIRST TUESDAY Lottery? and Descriptiveness

In In re North Carolina Lottery, [2016-2558] (August 10, 2017), the Federal Circuit affirmed the refusal of registration of FIRST TUESDAY in connection with lottery services and games on the first Tuesday of each month.

Like the examining attorney, the TTAB reasoned that N.C. Lottery’s promotional materials make clear that “new scratch-off games are offered on the first Tuesday of every month” and found that such fact would “be so understood by the relevant consumers who encounter the designation FIRST TUESDAY in the marketplace.”

The Federal Circuit said that a mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for
which registration is sought.  The Federal Circuit rejected the NC Lottery’s argument that its was error to rely on the explanatory text in its specimens to supplement the meaning of the mark and conclude that it is merely descriptive. The Federal Circuit said that it was proper to determine the descriptiveness in the context of its use.  The Federal Circuit also rejected the NC Lottery’s argument that the fact that explanatory text was needed on the specimens showed that the mark itself was not  descriptive.

The Federal Circuit found that the commercial context demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY. The Federal Circuit sajd that the evidence shows that the mark is less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services, and concluded  that substantial evidence therefore supports the TTAB’s finding that FIRST TUESDAY is a merely descriptive mark.

GottaWannaNeedaGettaHava Injunction

Bojangles International LLC originator of the Cajun Filet Biscuit that it promotes with the jingle “GottaWannaNeedaGettaHava” has sued Hardees for selling a Cajun Chicken Biscuit and using the phrase GottaWannaNeedaGettaHava to do so.
Hardees introduced its Cajun Fillet Biscuit via Twitter, and promptly received a cease and desist letter which prompted Hardess to rename its sandwich Cajun Chicken Biscuit.  This was not enough to appease Bojangles, which brought suit in North Carolina, alleging that Cajun Chicken Biscuit infringes its federally registered Cajun Fillet Biscuit trademark, and that Hardee’s introductory Tweet infringed its federally registered GottaWannaNeedaGettaHava  trademark.
It is a curious case because while Hardess indisputably used the phrase GottaWannaNeedaGettaHava in its tweet but not as a brand name, and arguably as a comparative reference to Bojangles’ arguing that its Cajun Fillet Biscuit is “better.” Would someone receiving this Tweet from Hardees really be confused?  Hardees started out using the Cajun Fillet Biscuit trademark, but quickly switched to Cajun Chicken Biscuit.  What would Bojangles expect Hardees to call a Cajun flavored chicken biscuit?
The case will test the limits of 15 U.S.C. § 1115(b)(4) defense for uses “otherwise than as a mark . . . which is descriptive of and used fairly and in good faith only to describe the goods or services.”  Hardees will likely argue its use “GottaWannaNeedaGettaHava” was a comparative reference to Bojangles, and its use of Cajun Chicken Biscuit is descriptive of its product.  It will be interesting to see if Bojangles can make Hardees dance.

The Skinny on SkinnyPop vs. Metacalfe’s Skinny

A interesting battle has “popped” up between Amplify Snack Brands, Inc., owner of the SKINNYPOP trademark, and Snyders-Lance, which is preparing to enter the market with METCALFE’S SKINNY POPCORN.  Amplify sued Snyders-Lance in federal court in Texas on April 11.  Amplify accused Snyders-Lance of willful infringement in an obvious attempt to confuse customers.  Meanwhile, Snyders-Lance sued Amplify the same day in North Carolina for a declaration that it is not infringing Amplify’s rights.

Popcorn appears to part of a larger plan by Kettle Foods Ltd. to introduce a whole line fo METCALFE SKINNY products including fruit-based snack food; nut-based snack food; fruit chips, low-fat potato chips, nuts, potato chips, bread, pastry and confectionery made of sugar, cereal bars; cereal-based snack food; corn-based snack food; crackers; rice-based snack food; rice cakes U.S. Application Nos. 87160093, 87160099, 87160107, 87160109, 87160114, 87160123).

Whether SKINNY is capable of identifying source is an open question.  There 116 issued registrations and 69 pending applications on marks including the term “SKINNY” for food products. Only 9 of the registrations disclaim of “skinny,” and only 10 of the applications (including all of  Kettle Foods Ltd.’s applications) disclaim “skinny.”  Lance also points out that there is at least one other SKINNY popcorn already in the market: SKINNYGIRL:

If not descriptive of food, SKINNY is certainly widely used, so whether Amplify’s can show METCALFE’S SKINNY POPCORN infringes SKINNYPOP POPCORN will be interesting. Kettle Foods Ltd. will likely contend, consistent with its disclaimer of “skinny” that its use of skinny is a permitted descriptive use under 15 USC §1115(b)(4).  Amplify reportedly has $200 million in popcorn sales, so this could be a epic battle.  Get a bowl of your favorite popcorn, and pull up a chair.