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Court Bars Defendant "From Making Any Comments That Could Be Construed As To Disparage [a Trademark]":

In The Freecycle Network, Inc. v. Oey, a federal district court issued a preliminary injunction ordering Tim Oey not to "mak[e] any comments that could be construed as to disparage upon Freecycle's possible trademark and logo." The court further ordered Oey "to remove all postings from the internet and any other public forums that he has previously made that disparage Freecycle's possible trademark and logo." (Oey is a former volunteer with The Freecycle Network who eventually concluded that "freecycle" should be a generic term, and not a privately owned trademark, and who has been trying to persuade others of that. Whether TFN actually has the trademark rights has not yet been finally adjudicated; it's part of a separate lawsuit in a different court.)

The order "specifically refers to, but is not limited to, the exhibits used by Freecycle in this case," which include, but are not limited to, statements such as,

I have encouraged people to use term freecycle as a generic term which would block The Freecycle Network (TFN), and all others, from holding a trademark on the term in the area of freecycling services offered on the web.

This would mean that everyone could use the term freecycle and no one could stop anyone else from using it.

and

The best way to keep freecycle in the public domain is for as many people and groups as possible to continue to use the term generically.

If you feel that the term freecycle is generic, you can let the USPTO know by sending a letter to: [the Commissioner of Trademarks] address.

Mayer Brown Rowe & Maw, the firm for which I'm a part-part-part-time Academic Affiliate, is handling the appeal to the Ninth Circuit; here's the brief, which was written by Don Falk with the help of Ian Feinberg, Dennis Corgill, summer associate (and my former student at Mayer) Pete Patterson, and me.

TomFromMD (mail):
freecycle, freecycle, freecycle.

Sue me.
7.14.2006 8:43pm
Fub:
TomFromMD wrote:
freecycle, freecycle, freecycle.
Xerox that and ebay the copies.
7.15.2006 1:22pm
PersonFromPorlock:
Joined Freecycle a while back; gave up on it because Yahoo kept losing my membership (many times!). Just in case anyone from Freecycle is reading this.
7.15.2006 7:21pm
Dilan Esper (mail) (www):
Well, combine the "tarnishment" theory of trademark dilution and the rather liberal standards for granting injunctions in intellectual property cases, and this was bound to happen.

Hopefully the Ninth Circuit will recognize that something's got to give.
7.15.2006 7:22pm
Crunchy Frog:
How does one disparage a trademark?

"This logo sucks!"
7.16.2006 1:24am
Nicholas P:
It's like, my opinion, like, Freecycle[TM], is like, so lame, even hippies think they suck. Like totaly.
7.16.2006 2:39am
Fishbane (mail):
Hopefully the Ninth Circuit will recognize that something's got to give.

Wait, do we like them now? Maybe I didn't get the memo.
7.16.2006 8:14am
EWS (mail):
What a truly poorly-written opinion. The likelihood of success section contains no argument, just a quick burst of facts and a conclusion. Someone get this judge a job at the SEC.
7.16.2006 4:44pm
raj (mail):
Let's understand something. The defendant wants to try to obliterate trademark rights by basically encouraging people to do a trespass on those rights. There is no 1st amendment right to do that, any more than there is a 5th amendment right for someone to trespass on your land.
7.17.2006 11:20am
Brother Bark (mail):
This is an arrogant, incredible attempt by a federal judge to terrorise an American citizen into not exercising his absolute right to speak freely. No matter how certain parties twist it around, a trademark is a purely commercial, limited privilege, and is *always* trumped by the First Amendment, nor is it anything but disingenuous to conflate such a limited privilege to the status of hard property such as real estate.

Furthermore, "freecycle" is indeed a generic term, and this attempt to grab it as an entire trademark exclusive of any other component is a clear abuse of the function of the USPTO.
7.17.2006 3:20pm
Ethelred:
Raj

IANAL, but at least I read the brief. If you read it also, then perhaps you'd like to try addressing the points raised therein, i.e., by some argument other than belligerent assertion. If you didn't, then feel free to continue to weaken the case you nominally support, though I for one would like to see an intelligent defense of the injunction, assuming such a defense exists.

Let's try a slight rephrasing of your "defendant wants to try to obliterate trademark rights". Defendant (Oey) wants to [help] prevent plaintiff (TFN) from obtaining certain trademark rights in the first place. Rather different that way. Discuss.
7.17.2006 4:35pm
Eugene Volokh (www):
Raj: Fortunately, the brief speaks to the issue you raise. Here's the excerpt (paragraph breaks added); what do you think?
Fourth, to the extent they advocate that others take action, Oey’s comments encourage only lawful, constitutionally protected activity.

Advocacy loses First Amendment protection only when it “is directed to inciting or producing imminent lawless action and is likely to incite or produce such action.” Brandenburg v. Ohio, 395 U.S. 444, 447 (1969) (emphasis added). None of Oey’s comments encourage lawless action, much less imminent lawless action.

Contacting the PTO about a pending trademark application is not only lawful but is protected by the First Amendment right to petition “all departments of the Government.” BE&K Const. Co. v. N.L.R.B., 536 U.S. 516, 525 (2002).
The general public also may lawfully use even real trademarks in their generic sense, even though that usage may render term itself generic so that it loses trademark protection through the process known as “genericide.” See AmCan Enterprises Inc. v. Renzi, 32 F.3d 233, 234 (7th Cir. 1994) (noting that “‘yellow pages’ has become a generic term”).

Indeed, the Lanham Act explicitly recognizes that a trademark registration, even an “incontestable” registration, will be cancelled if the trademark becomes generic. 15 U.S.C. §§ 1064(3), 1065. See generally 2 MCCARTHY, supra, at §§ 17:8 (describing how a trademark may become generic through usage). But courts cannot interfere with this speech. A “trademark owner” simply has no recourse “against purely generic or nominative uses of the term that do not serve to distinguish goods or services.” Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 964 (C.D. Cal. 1997) aff’d, 194 F.3d 980 (9th Cir. 1999). See generally Stacey L. Dogan &Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41 HOU. L. REV. 777, 805-11 (2004) (collecting authorities).
7.17.2006 6:01pm