15 USC 1115(b)(4) provides that the use of a registered term, otherwise than as a mark, which is descriptive of, and used fairly and in good faith only to describe your goods or services, is not trademark infringement. The Northern District of California in Freelancer International Pty. Ltd. v. Upwork Global, Inc. [20-cv-06132-SI]https://trademarks.harnessip.com/wp-admin/upload.php?item=511, recently provided some helpful guidance on what qualifies as a permissible descriptive use.

Freelancer Technology Pty Limited sued Upwork for infringement of U.S. Reg. No. 4,284,314 on FREELANCER, complaining about Upworks’ use of Freelance in connection with its software:

Defendants argued they use the plain meaning of the word “freelancer” on their app display names and elsewhere to describe the appropriate users: freelancers. Defendants further argued they use the word “freelancer” in good faith because they trade on Upwork’s own considerable goodwill and have not sought to trademark the words “Freelance” or “Freelancers.” Finally, defendants argue they use the word “freelancer” “otherwise than as a mark” and rely on defendants’ own Upwork trademark.

The court noted that the Ninth Circuit has identified at least two factors to consider when determining whether a term is being used as a mark: (1) “whether the term is used as a symbol to attract public attention, which can be demonstrated by the lettering, type style, size and visual placement and prominence of the challenged words”; and (2) “whether the allegedly infringing user undertook precautionary measures such as labeling or other devices designed to minimize the risk that the term will be understood in its trademark sense.”

The Court found that all of Upwork’s uses of Freelancer were proper and descriptive. The court specifically said it 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 Defendants do not list the word “Freelancer” among defendants’ own publicly listed trademarks, nor do defendants implement a stylized font or “TM” symbol when using the word “Freelancer.”

The case is notable for its guidance that merely capitalizing the word, or using a bold typeface does not turn a descriptive use into a trademark use. However, it is advisable to avoid a distinctive typeface, and obviously avoid identifying the mark with a TM.

Topps Co. sued Koko’s Confectionery & Novelty for patent infringement and trade dress infringement.

The district court granted summary judgment of non-infringement of the patent, and of non-infringement of the trade dress.

As to the trade dress infringement claim, the district court said no reasonable jury could find that the trade dresses of the Juicy Drop Pop and the Squeezy Squire Pop are confusingly similar because the lack of similarity between the two products is “overwhelming.” The district court noted that (1) in SSP, the nozzle cap and candy handle are adjacent to each other, while the nozzle and the handle in JDP are located on opposite ends, (2) SSP’s nozzle cap has a plastic “geyser” of the liquid candy in the same color as the nozzle cap, whereas JDP lacks an analogous feature and its nozzle and nozzle cap are a different color from that of the rest of the trade dress. (3) SSP’s nozzle cap and handle are far larger and in different shapes from those of JDP. (4) Lastly, SSP’s bottle has an oval-shaped compressible portion with concentric ovals; JDP ‘s compressible bottle has a round compressible portion with a swirl design. The district court said “[t]aking these features into account, the overall impression of the two products are dissimilar.

In Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, [2019-1567] (July 27, 2020), the Federal Circuit reversed and remanded the TTAB’s dismissal of Australian Therapeutic’s petition to cancel Naked TM’s U.S. Reg. No. 3,325,577 for the mark NAKED for condoms.

The Board found that, although no formal written agreement existed, the parties entered into an informal agreement through email communications and the parties’ actions under which Australian Therapeutics agreed it would not use or register its unregistered mark in the United States and that Naked could use and register its NAKED mark in the United States. The Board found that Australian Therepeutic led Naked to reasonably believe that Australian had abandoned its rights in the United States to the NAKED mark in connection with condoms.

The Federal Circuit said that the Board discussed the requirements to bring a cancellation proceeding under 15 U.S.C. § 1064 in terms of “standing” instead of a statutory entitlement to a cause of action under 15 U.S.C. § 1064, and proceeded to review de novo whether Australian has established entitlement to a statutory cause of action under § 1064. Section 1064 provides that a petitioner may seek cancellation of a registered trademark if the petitioner “believes that he is or will be damaged” by the registered trademark. § 1064.

The Federal Circuit said that the Board required that Australian establish proprietary rights in its unregistered mark in order to demonstrate a cause of action under § 1064, and said that this was error. Neither § 1064 nor Federal Circuit precedent requires that a petitioner have a proprietary right in its own mark in order to demonstrate a cause of action before the Board. For example, a trade association may have standing to oppose a mark’s registration without having proprietary rights in a mark.

The Federal Circuit said that the Board determined that Australian had contracted away its right to use and register its unregistered mark, but contracting away one’s rights to use a trademark does not preclude a petitioner from challenging a mark before the Board. The Federal Circuit noted that while an agreement could ultimately bar Australian from proving actual damage, § 1064 requires only a belief of damage.

The Federal Circuit concluded that neither § 1064 nor its precedent requires that a petitioner in a cancellation proceeding must prove that it has proprietary rights in its own mark in order to demonstrate a real interest in the proceeding and a belief of damage.

On the issue of a real interest and reasonable belief of damage,the Federal Circuit said that such an interest exists where the petitioner’s application has been refused registration based on a likelihood of confusion with the challenged mark, or where the petitioner is making and selling products with the challenged mark. The Federal Circuit said that Australian Therapeutic demonstrates a real interest in the proceeding because it twice filed an application to register its unregistered mark, and because the USPTO refused registration of both applications based on a likelihood of confusion with Naked’s registered mark. Australian’s applications for registration, the USPTO’s refusal of registration, and the USPTO’s suspension of prosecution support a conclusion that Australian Therapeutic meets the statutory requirements under § 1064.

Naked argued that Australian Therapeutic’s applications do not support a cause of action under § 1064 because Australian abandoned the first one and the second one was a post filing futile attempt to establish its standing. Naked further argued that “mere ownership of a pending application does not in itself provide standing to oppose other applications.” The Federal Circuit was not persuaded. The Federal Circuit noted that a trademark owner does not abandon her rights in a mark by abandoning prosecution. The Federal Circuit also noted Australian Therapeutic’s advertising and sales in the United States also demonstrate a real interest and reasonable belief of damage.

Naked challenged the sufficiency of Australian’s commercial activity because Australian’s marketing and advertising activities are “isolated,” “limited,” and “de minimis,” and its sales are “sporadic” and “nominal,” but the Federal Circuit said that Section 1064 does not impose a minimum threshold of commercial activity, and it declined to define one.

The Federal Circuit concluded that based on the facts established before the Board, Australian Therapeutic had a real interest in the cancellation proceeding and a reasonable belief of damage, thereby satisfying the statutory requirements to seek cancellation of a registered trademark. We reverse and remand to the Board for further proceedings consistent with this opinion.

Today in U.S.P.T.O v. Booking.com B.V., the Supreme Court rejected the USPTO’s position that BOOKING.COM was unregistrable because it merely a combination of a generic term and a tld designator.  The Supreme Court rejected the application of a per se rule against the registrability of compound marks based on generic terms, finding instead that consumer perception of the term should control.  Judge Ginsberg noting that “[b]ecause ‘Booking.com’ is not a generic name to consumers, it is not generic.”

The Court distinguished Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888), where it held that a generic corporate designation added to a generic term does not confer trademark eligibility.  The Court found the comparison faulty because of the nature of the internet — a “generic.com” term could convey to consumers a source-identifying characteristic: an association with a particular website.

The Court also rejected a per se rule that every generic term combined with a tld is automatically not generic, holding that whether any given generic.com term is generic “depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of dis­tinguishing among members of the class.”

It will be interesting to see what the USPTO does with the application on remand.  Will it require a disclaimer of the generic term “booking” and the tld “.com”?  If so, then the applicant will have disclaimed the entire mark apart from itself.

It will also be interesting to see what booking.com will do with its registration.  No reasonable competitor would consider using “booking.com” as their own brand, because they would be driving customers to booking.com.  What is the point?  Can booking.com tie up booking combined with other tld’s? Booking.com conceded that booking.com would be “weak” (Tr. of Oral Arg. 66). Indeed they will get a registration only because of the association of the term with a particular website.  What of a booking.online (which presently appears to be available)?  Would that create a likelihood of confusion, or would the fame of booking.com that won them a registration make such confusion unlikely?  Competitors are entitled to use the generic term “booking”, what remains to be seen is how.

On March 26 Adidas prevailed on Summary Judgment in a trademark infringement suit alleging that its use of “You’re Never Done” infringed U.S. Reg. No. 4,928,298 on YOU’RE NEVER DONE for a variety of products including athletic shoes.

The court held that plaintiff did not use the mark in commerce before defendant. The parties did not dispute that Plaintiff did not make any product sales, because potential customers could not do so through plaintiff’s website until after suit was filed. Plaintiff tried to rely on non-sales activity, such as purchasing the domain names, establishing the website, and ordering products bearing the marks. However, the district court held that these activities, taken together, reflect “mere preparation to use a term as a trademark,” rather than actual use.

Ultimately, the Court found that Plaintiff’s registration on the YOU’RE NEVER DONE was void ab initio. The Court then turned to the question of whether plaintiff had common law rights in YOU”RE NEVER DONE

The court found that plaintiff did not show that he used the marks in commerce such that he is entitled to common law rights in them. Just as the Court found with respect to the plaintiff’s registration, Plaintiff’s non-sales activity relating to YOU’RE NEVER DONE reflects “mere preparation” rather than actual use. The Court found that Adidas started its campaign in March 2018 while plaintiff conceded its actual use did not begin until October 2019. Accordingly, even if plaintiff had “used” the mark in commerce, his alleged use postdates Defendant’s use, thus depriving him of any common law right in the marks.

The Court granted summary judgment in favor of defendant on the Lanham Act, and on plaintiff’s state law claims as well..