In affirming a summary judgment grant of non-infringement, the U.S. Court of Appeals for the Fourth Circuit held that the term "freebies" is generic and, thus, cannot be infringed by the internet domain name "freebie.com." Retail Services Inc. v. Freebies Publishing, Case Nos. 03-1272 and 03-1317, 2004 U.S. App. Lexis 7130 (4th Cir. Apr. 13, 2004).
Retail Services Inc. (RSI) was operating its website www.freebie.com where customers could redeem their "Freebie Points" for merchandise. The owners of the federal trademark registration for the mark "Freebies" discovered RSI’s use of the word "freebie" on its website and filed an action under the Uniform Domain Name Dispute Resolution Policy. The arbitrator found that RSI’s domain name was confusingly similar to the owners’ registered mark and ordered the transfer of the domain name to the owners.
Thereafter, RSI brought the underlying action arguing that the "freebies" mark has become generic. The district court agreed. While acknowledging that the federal registration is prima facie evidence that the mark is not generic, the district court noted that only raises a presumption of validity that serves to shift the burden of producing evidence of genericness to RSI. The district court found that RSI met its burden by producing dictionary definitions of the word "freebie" from various sources; the owners’ generic use of the term in their own website; 1,600-plus websites that incorporate the word "freebie" or "freebies" into their domain names; and a list of 51 news reports using the phrase "freebie site" referring to websites similar to the owners’ freebies.com website. Based on what it considered overwhelming evidence in support of genericness, the district court granted RSI summary judgment.
On appeal, the owners of the mark first argued that summary judgment was inappropriate because an issue of fact existed by virtue of the federal registration and status of incontestability. The Fourth Circuit considered the registration and incontestability status and acknowledged the "significant procedural advantage" they bestowed on the owners of the registration. However, the Court echoed the district court’s finding that the presumption of validity and incontestability do not shield a mark that is generic. The Court also addressed its holding in American Online, Inc. v. AT&T Corp., clarifying that the issuance of a certificate of registration, by itself, does not create a per se issue of fact sufficient to defeat summary judgment. The Court explained "at most, American Online suggests that, as a general rule, the introduction of a certificate of registration will create enough of a factual dispute to render summary judgment inappropriate on the basis that the mark is generic."
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
