To what extent can UpWork use the word Freelancer?

The popular platform for freelance services UpWork won a trademark dispute against its rival Freelancer in the US.

The case at hand concerns the way how UpWork use the word Freelancer for its apps.

According to Freelancer, Upwork uses this word as an indication of its app in Apple and Google stores, which is a problem for the company that owns trademarks for FREELANCER in classes 9, 35, 36, 45.

The Court in California, however, dismissed this claim. In the case of low distinctive and descriptive trademarks with limited protection, other market participants can use the descriptive word insofar this use is not a trademark one and serves only for description purposes related to the relevant goods and services.

In the case of UpWork, they did exactly this, using the word Freelancer as a descriptive term. There was no possibilities for consumer confusion because the UpWork logo was completely different based on which consumers can distinguish both apps clearly.