In a lawsuit by Freelancer.com against Upwork Inc. (NASDAQ: UPWK) over the use of the word freelancer, the US Court of Appeals for the Ninth Circuit upheld a ruling by the district court rejecting a preliminary injunction against Upwork.
Freelancer.com’s lawsuit argues Upwork’s mobile app for freelancers infringes on its trademark because the app’s icon lists the word “Freelancer” under the “Up” logo, according to court records. It also alleged that approximately one to two app notifications allegedly incorporate the “Freelancer” mark.
In its decision issued Tuesday, the Ninth Circuit wrote the “district court conducted the proper analysis and did not clearly err in its factual findings supporting its conclusion that Upwork does not use the term ‘freelancer’ as a mark.” Instead, the Ninth Circuit said Upwork used the word as a descriptive term to describe its app.
The Ninth Circuit also found the district court “did not abuse its discretion by concluding that Freelancer.com is unlikely to succeed on the merits of its counterfeiting claim because it did not show that Upwork’s mark is identical or substantially indistinguishable from Freelancer.com.”
The district noted the products are dissimilar and each company has its own distinct and original app, logo and branding.
Also, the Ninth Circuit said the district court was correct in that Freelancer.com did not show likelihood of irreparable harm if the preliminary injunction were not in place.
In a statement, Freelancer.com responded to the decision. “We believe that the analysis was not correct and that we intend to challenge it further,” the company said.
The underlying case in federal district court will continue. The suit was filed on Aug. 31, 2020. Its case number is 3:20-cv-06132-SI.