UnIntellectual Property (UnIP): Trademark for “Web Celeb”

The United States Court of Appeals for the 9th Circuit affirmed a district court’s grant of summary judgment to defendants Procter & Gamble Co., Microsoft Corp., and BermanBraun, LLC, on plaintiff Webceleb, Inc.’s  claims for trademark infringement under the Lanham Act and unfair competition under California Business & Professions Code section 17200.  The thresshold issue was whether use of “web celeb” by the defendants infringed plaintiff’s registered trademark for WEBCELEB.

The Court held that: “Defendants’ use of “web celeb” as a television show award category and a section of an entertainment website is an objectively fair use of plaintiff’s “WEBCELEB” trademark. There is no genuine dispute that defendants’ use meets the classic fair use elements: (1) the use of the mark is not a trademark use; (2) the use is fair and in good faith; and (3) the use is only descriptive. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir.2002).”
In doing so, the Court drew the following conclusions:
1. defendants did not use “web celeb” as a source identifier
2. defendants used “Favorite Web Celeb” as one of more than thirty-five awards, most of which follow the “Favorite [category]” scheme
3. “web celeb” is common parlance for Internet celebrities, which is precisely what the award is intended to recognize
4. defendants’ use of “web celeb” as part of a stylized “button” and a headline on defendants’ online magazine is also not a trademark use
5. defendants’ use of “web celeb” was merely descriptive of the magazine’s content
6. “Web celeb” headlined stories about Internet celebrities and the “Favorite Web Celeb” contest, much like the stylized “AWW” button denoted cute or “aww”-inspiring content
7. the prominent presence of defendants’ own trademarks and logos alongside each use of “web celeb” is another indication of a non-trademark use
8. difference between “web celeb” and “WEBCELEB” is “pivotal,” since “web celeb” has a common meaning that defendants intended to invoke
I would have thought this case would be closer than what the district court and 9th Circuit held in their opinions with regard to whether some of the above-identified uses were purely descriptive or arguably as a source identifier.  This is undoubtedly a victory for the trademark fair use doctrine and those who wish to use descriptive words consistent with their dictionary or colloquial meaning.  This would have been a very different case had defendants used the mark in connection with those services/goods covered by plaintiff’s trademark, namely “Providing temporary use of on-line non-downloadable software to enable uploading, posting, showing, displaying, tagging, blogging, sharing, or otherwise providing electronic media or information in the field of general interest over the Internet or other communications network.”  This case goes to show that when the descriptions that may allow a trademark to be registered in the first place are actually applied to the underlying goods/services, it may not be as distinctive or strong as it appears when simply viewing the TESS record.
Webceleb, Inc. v. Procter & Gamble Co., 12-56943, 2014 WL 448648 (9th Cir. Feb. 5, 2014).


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