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<\/a><\/figure><\/div>\n\n\n\nOnce downloaded to a device, Upwork’s \u201cUpwork for Freelancers\u201d provides its display name, listed beneath the app\u2019s \u201cUp\u201d logo icon, as \u201cFreelancer\u201d on iOS devices and as \u201cFreelancer-Upwork\u201d on Android devices — This is what Freelancer objected to.<\/p>\n\n\n\n
<\/a><\/figure><\/div>\n\n\n\nThe 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\u2019 alleged infringing use of plaintiff\u2019s mark \u201cis 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.\u201d The court noted that defendants submitted evidence showing (1) defendants use the word \u201cfreelancer\u201d to describe their users and (2) the word \u201cfreelancer\u201d is well-known and defined as \u201csomeone who is not permanently employed by a particular company, but sells their services to more than one company.\u201d The court found that plaintiffs did not offer a persuasive refutation of defendants\u2019 fair use argument, dismissing the fair use defense as inapplicable because plaintiffs do not challenge defendants\u2019 use of the word \u201cFreelancer\u201d where it is not used \u201cas a mark.\u201d<\/p>\n\n\n\n
The court discussed and rejected Freelancer’s arguments, finding that the instances in which Upwork allegedly uses \u201cfreelancer\u201d as a mark are proper and descriptive uses of a common word distinguishing Upwork\u2019s freelancer app from its client app. The Court was not persuaded that bold font and a capital letter are sufficient to show defendants use \u201cFreelancer\u201d as a mark versus a descriptive term \u2013 especially when Upwork\u2019s distinctive lime green logo or coloring is placed directly alongside the various notifications. The Court noted that Upwork did not list the word \u201cFreelancer\u201d among its own publicly listed trademarks, nor did Upwork implement a stylized font or \u201cTM\u201d symbol when using the word \u201cFreelancer.\u201d<\/p>\n\n\n\n
Based on the current record, the court found that Upwork does not use \u201cfreelancer\u201d as a mark, rather, Upwork’s used the word in good faith to describe its users, and thus the court agreed that the defendants\u2019 use of the word \u201cfreelancer\u201d satisfies the requirements of fair use under 15 U.S.C. \u00a7 1115(b)(4). <\/p>\n\n\n\n
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.<\/p>\n\n\n\n
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. <\/p>\n","protected":false},"excerpt":{"rendered":"
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 … Continue reading