Descriptive Use of a Registered Mark is not Infringement

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.hdp.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.