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201-896-4100 info@sh-law.comPeloton Claims Genericide in Seeking to Cancel Spinning Trademark
Author: Scarinci Hollenbeck, LLC|March 24, 2021
Despite having one of the most popular high-end exercise bikes, Peloton Interactive, Inc. can’t use the terms “spin” and “spinning” when advertising its products.
Peloton Claims Genericide in Seeking to Cancel Spinning Trademark
Despite having one of the most popular high-end exercise bikes, Peloton Interactive, Inc. can’t use the terms “spin” and “spinning” when advertising its products.
While Peloton Interactive, Inc.’s (Peloton) sales have surged amid the COVID-19 pandemic, the company isn’t satisfied. Despite having one of the most popular high-end exercise bikes, it can’t use the terms “spin” and “spinning” when advertising its products. The trademarks are owned by Mad Dogg Athletics (Mad Dogg), a competing spin bike seller. To gain access to the “spinning” trademark, Peloton recently filed a petition to cancel the rival’s trademark, arguing that it has become generic.
Madd Dogg’s “Spinning” Trademark
Mad Dogg owns a registration for the mark “spinning” in Class 41 for “providing facilities for recreation, physical fitness, exercising activities, fitness instruction, and fitness consultation.” Mad Dogg aggressively polices the use of its trademarks. On its website, the company provides trademark guidelines for use of the term “spinning,” emphasizing that they’re “important business assets” that should be treated with “care and respect.” The website further states: “These marks are brand names that serve to identify the unique fitness products and programs offered by Mad Dogg Athletics, Inc. These brand names should not be used to refer to any goods or services other than those owned and offered by Mad Dogg Athletics, Inc.”
Notably, this is not the first legal dispute between the rival exercise companies. In December, Mad Dogg filed a patent infringement lawsuit against Peloton, alleging that Peloton’s Bike and Bike+ infringed on two of its patents covering “core features of a stationary exercise bike.”
Peloton’s Petition to Cancel
On February 16, 2021, Peloton fired back by filing a Petition of Cancellation with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (USPTO). Peloton alleges that “the terms SPIN and SPINNING are generic, and Mad Dogg should be barred from continuing to abusively enforce its improper trademark rights across the spinning industry.”
According to Peloton, the term “spinning” is generic for “providing facilities for recreation, physical fitness, exercising activities, fitness instruction, and fitness consultation.” The company further alleges that Mad Dogg “has spent years engaged in a bullying campaign of demand letters and litigation to force people and companies to stop using the very terms they have every right to use.”
In support of its allegation that spin and spinning are generic terms, Peloton cites use of the term in new articles, Wikipedia, and social media in reference to both the bikes and the fitness classes and facilities that use them. The petition states:
Spin class and spin bike are part of the fitness lexicon. Even five minutes of simple Google searching reveal that everyone in the world—other than Mad Dogg—understands that “spin” and “spinning” are generic terms to describe a type of exercise bike and associated in-studio class. As detailed below, countless publications review “spin/spinning classes” and “spin/spinning bikes” provided by a wide variety of different companies including Peloton, SoulCycle, Flywheel, NordicTrack and others.
What Is Genericide?
Peloton is essentially arguing that the terms “spin” and “spinning” have fallen victim to genericide. Under the Lanham Act, generic terms may not be registered as trademarks because they do not identify the source of a product. In contrast, arbitrary or fanciful marks are “automatically entitled to protection because they naturally serve to identify a particular source of a product.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).
The term “genericide” refers to when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, aspirin, thermos, escalator, and cellophane were once trademarks before they became generic.
Under existing court precedent, a trademark becomes generic when the “primary significance of the registered mark to the relevant public” is as the name for a particular type of good or service irrespective of its source. As explained by the Ninth Circuit in Elliot v. Google Inc., “If the relevant public primarily understands a mark as describing ‘who’ a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing ‘what’ the particular good or service is, then the mark has become generic.”
It will be up to the USPTO (and possibly a federal court) to determine whether Mad Dogg’s trademarks are entitled to continued registration. Several years ago, Google prevailed in a lawsuit alleging that its Google trademark should be cancelled on the ground that it is generic. While “just Google it” is a common phrase, the Ninth Circuit Court of Appeals held that the “verb use of the word ‘google’ to mean ‘search the internet,’ as opposed to adjective use, did not automatically constitute generic use.” The appeals court further held that the plaintiff failed to establish that the primary significance of the word “google” to the relevant public was as a generic name for internet search engines, rather than as a mark identifying the Google search engine in particular.
We will report on further developments of the “spinning” case.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.
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Peloton Claims Genericide in Seeking to Cancel Spinning Trademark
Author: Scarinci Hollenbeck, LLC
While Peloton Interactive, Inc.’s (Peloton) sales have surged amid the COVID-19 pandemic, the company isn’t satisfied. Despite having one of the most popular high-end exercise bikes, it can’t use the terms “spin” and “spinning” when advertising its products. The trademarks are owned by Mad Dogg Athletics (Mad Dogg), a competing spin bike seller. To gain access to the “spinning” trademark, Peloton recently filed a petition to cancel the rival’s trademark, arguing that it has become generic.
Madd Dogg’s “Spinning” Trademark
Mad Dogg owns a registration for the mark “spinning” in Class 41 for “providing facilities for recreation, physical fitness, exercising activities, fitness instruction, and fitness consultation.” Mad Dogg aggressively polices the use of its trademarks. On its website, the company provides trademark guidelines for use of the term “spinning,” emphasizing that they’re “important business assets” that should be treated with “care and respect.” The website further states: “These marks are brand names that serve to identify the unique fitness products and programs offered by Mad Dogg Athletics, Inc. These brand names should not be used to refer to any goods or services other than those owned and offered by Mad Dogg Athletics, Inc.”
Notably, this is not the first legal dispute between the rival exercise companies. In December, Mad Dogg filed a patent infringement lawsuit against Peloton, alleging that Peloton’s Bike and Bike+ infringed on two of its patents covering “core features of a stationary exercise bike.”
Peloton’s Petition to Cancel
On February 16, 2021, Peloton fired back by filing a Petition of Cancellation with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (USPTO). Peloton alleges that “the terms SPIN and SPINNING are generic, and Mad Dogg should be barred from continuing to abusively enforce its improper trademark rights across the spinning industry.”
According to Peloton, the term “spinning” is generic for “providing facilities for recreation, physical fitness, exercising activities, fitness instruction, and fitness consultation.” The company further alleges that Mad Dogg “has spent years engaged in a bullying campaign of demand letters and litigation to force people and companies to stop using the very terms they have every right to use.”
In support of its allegation that spin and spinning are generic terms, Peloton cites use of the term in new articles, Wikipedia, and social media in reference to both the bikes and the fitness classes and facilities that use them. The petition states:
Spin class and spin bike are part of the fitness lexicon. Even five minutes of simple Google searching reveal that everyone in the world—other than Mad Dogg—understands that “spin” and “spinning” are generic terms to describe a type of exercise bike and associated in-studio class. As detailed below, countless publications review “spin/spinning classes” and “spin/spinning bikes” provided by a wide variety of different companies including Peloton, SoulCycle, Flywheel, NordicTrack and others.
What Is Genericide?
Peloton is essentially arguing that the terms “spin” and “spinning” have fallen victim to genericide. Under the Lanham Act, generic terms may not be registered as trademarks because they do not identify the source of a product. In contrast, arbitrary or fanciful marks are “automatically entitled to protection because they naturally serve to identify a particular source of a product.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).
The term “genericide” refers to when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, aspirin, thermos, escalator, and cellophane were once trademarks before they became generic.
Under existing court precedent, a trademark becomes generic when the “primary significance of the registered mark to the relevant public” is as the name for a particular type of good or service irrespective of its source. As explained by the Ninth Circuit in Elliot v. Google Inc., “If the relevant public primarily understands a mark as describing ‘who’ a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing ‘what’ the particular good or service is, then the mark has become generic.”
It will be up to the USPTO (and possibly a federal court) to determine whether Mad Dogg’s trademarks are entitled to continued registration. Several years ago, Google prevailed in a lawsuit alleging that its Google trademark should be cancelled on the ground that it is generic. While “just Google it” is a common phrase, the Ninth Circuit Court of Appeals held that the “verb use of the word ‘google’ to mean ‘search the internet,’ as opposed to adjective use, did not automatically constitute generic use.” The appeals court further held that the plaintiff failed to establish that the primary significance of the word “google” to the relevant public was as a generic name for internet search engines, rather than as a mark identifying the Google search engine in particular.
We will report on further developments of the “spinning” case.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.
