FREEBIES mark generic, rules Fourth Circuit

In Retail Services Inc v Freebies Publishing, the US Court of Appeals for the Fourth Circuit has ruled that ownership of a trademark registration, even one that is incontestable, is not by itself sufficient to preclude a finding of genericness. In so doing, the court upheld the plaintiff's motion for a summary judgment declaration that the defendant's FREEBIES mark was generic.

Retail Services Inc (RSI) sought a declaratory judgment of non-infringement of Freebies Publishing's FREEBIES mark after losing an arbitration proceeding under the Uniform Domain Name Dispute Resolution Policy, which ordered RSI to transfer the domain name 'freebie.com' to Freebies Publishing. Freebies Publishing owns the domain name 'freebies.com' and a federal registration for FREEBIES (stylized) for use with "magazines and newspapers with information about mail order offerings". RSI used its domain name to provide retailers with a programme to offer free incentives to their consumers. In addition to seeking a judgment of non-infringement, RSI also sought to cancel Freebies Publishing's registration for the FREEBIES mark on the grounds that it was generic.

The US District Court for the Eastern District of Virginia granted RSI's motion for summary judgment that the mark was generic. On appeal, Freebies Publishing argued that summary judgment was inappropriate because the registration created an issue of fact that the mark was not generic. The Fourth Circuit affirmed the judgment of genericness, holding that a registration alone is not sufficient to preclude a finding of genericness. Rather, it only raises a rebuttable presumption. RSI was able to rebut this presumption with evidence that included dictionary definitions, the manner of Freebies Publishing's own use, widespread third-party use and media use. Because Freebies Publishing had no evidence aside from the registration itself, the Fourth Circuit held that the overwhelming evidence of genericness submitted by RSI outweighed the evidence of the registration.

The Fourth Circuit also discounted the argument by Freebies Publishing that its use of FREEBIES was not in a generic sense. The court found that providing information about free products, even if not providing the free products themselves, was still a generic use of the term.

For a discussion of the district court's decision, see Federal court in Virginia overturns NAF decision.

Karin Segall, Darby & Darby, New York