Volume II

Issue : 9: April 29, 2004

• The Use of Video Surveillance by Employer Violates PIPEDA
• U.S. Court Upholds Prison Term in Online Pharmacy Case
• U.S. Appeals Court Finds Registered Trade Mark Generic for Purposes of ACPA
• FCC VoIP Ruling Could Cost AT&T Billions
• Canadian Phone Companies Protest CRTC's VoIP Opinion
• Sex.com Dispute Finally Settles
• German Open Source Proponent Obtains Order Enforcing GNU General Public License
• U.S. Court of Appeals Overturns Decision on Disgruntled Homebuyer's Website
• Court Upholds Enforceability of Clickwrap Agreement that Was Accepted Under Protest
• Criminal Charges Filed for First Time under U.S. Spam Legislation

Home > Volume II > Issue 9: April 29, 2004 > U.S. Appeals Court Finds Registered Trade Mark Generic for Purposes of ACPA

U.S. Appeals Court Finds Registered Trade Mark Generic for Purposes of ACPA

The United States Court of Appeals for the Fourth Circuit recently affirmed a lower court decision granting summary judgment, dismissing a claim under the Anti-Cyber Squatting Consumer Protection Act (ACPA). The defendant, Freebies Publishing, was the registered holder of the trade-mark "freebies"and also owned the domain name freebies.com. Freebies Publishing used the name in relation to a magazine, as well as its website, providing information to consumers about free products and services. The plaintiff, Retail Services Inc. (RSI), obtained the domain name freebie.com, which it used in connection with its freebie points scheme used for the retail business of video and DVD rentals and sales. RSI sought a declaration that its use of the domain name freebie.com did not violate ACPA. It had lost this argument before an arbitrator under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). However, RSI was successful, both at the lower court and on appeal. The courts found that there was sufficient evidence that the word "freebie" was generic, that there was no issue to be tried. Under ACPA, the owner of a protected mark has a claim against anyone who registers or uses an identical mark or confusingly similar mark with bad faith. While Freebies Publishing had a registered U.S. trade mark, the presumption of a valid registration could be defeated by evidence of the generic nature of the name. Once the court had concluded that the name was generic, it held that "freebies" could not function as a trade-mark and accordingly, notwithstanding the registration of the trade-mark, Freebies Publishing could not make a claim as a trade-mark owner under ACPA.

To view the decision, visit:
http://caselaw.findlaw.com/data2/circs/4th/031272p.pdf