January 12, 2015


by Stites & Harbison, PLLC

This week is a big week in the Virginia yoga world. The Mid-Atlantic USA Yoga Championships are this Saturday. Competition in yoga, you ask? This seems quite anti-yogi, doesn't it? Au contraire, mon frere. For the three minutes each competitor is on stage, that competitor is focused on nothing but the asana. No other thoughts in, no other thoughts out. Each competitor performs seven postures from the Bikram style of yoga.

My bff Kimberly in rabbit posture during the 2013 competition

For those of you unfamilar with Bikram Yoga, yogi Bikram Choudhury created the "Bikram" style of hot yoga, which consists of a series of 26 asanas and two breathing exercises practiced in a room heated to approximately 105 degrees Fahrenheit. Choudhury has been using the trademark BIKRAM for his yoga classes and instructional materials since 1971.

Being a trademark attorney, I appreciate that Choudhury has been extremely diligent and vigorous about protecting his intellectual property. Choudhury has obtained copyright registrations for his yoga instructional materials and attempted to claim copyright in the Bikram sequence.

Bikram Sequence

Choudhury claims trademark rights in the mark BIKRAM YOGA for "educational services, namely, conducting classes, seminars, conferences, and teaching training in the fields of yoga instruction, yoga philosophy, yoga theory and practice, allopathic physical systems, integration of medical and yogic systems, yoga therapy, marketing of yoga instruction, physical fitness, meditation, mental training and discipline, and health, and distributing course materials in connection therewith." The U.S. Patent & Trademark Office recently granted a registration for this mark. He also claims rights in the mark BIKRAM for the same educational services as well as for clothing, and he's attempted to obtain a federal trademark registration for simply HOT YOGA for conducting yoga instructional classes, seminars, conferences, workshops, and retreats.

The U.S. Patent & Trademark Office refused to grant registration of HOT YOGA, claiming that it is generic for Choudhury's services and therefor unregisterable under Trademark Act Section 23(c), 15 U.S.C. §1091(c). The Trademark Office is right on this one. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services and are, by definition, incapable of indicating a particular source of the goods or services. Because generic terms cannot serve as source identifiers, they cannot be registered as trademarks. Granting registration of HOT YOGA to Choudhury would grant him a monopoly on the mark and would prevent fellow yogis from describing their yoga classes and workshops as they are: hot!

Regardless, Choudhury still gets quite heated when others use the term "hot yoga" to describe their yoga classes. Aside from sending numerous cease and desist letters to those using "hot yoga" to describe their yoga class offerings, Choudhury even initiated two lawsuits alleging both trademark infringement and copyright infrigement. As noted, Choudhury recently obtained a registration for the mark BIKRAM YOGA for use in connection with educational services, preventing those not licensed by Bikram from using the mark. The real question here is whether Bikram still serves as a source identifier or whether its now generally viewed as simply a style of yoga.

If you're a yoga instructor wanting to teach the series under the mark BIKRAM, don't sweat it. Those yogis wishing to use BIKRAM to describe their yoga offerings can complete a certification from Bikram's Yoga College of India and become authorized under a limited trademark license to teach the Bikram's Basic Yoga System. In short, a trademark license is an agreement between a trademark owner and a third party in which the licensor permits the licensee to use its trademark in commerce pursuant to specific terms. Though the process of obtaining a license to use the mark BIKRAM may appear cumbersome and expensive, it is much more cost-effective than defending allegations of trademark infringment. Otherwise, describing your classes as the generic "hot yoga" or the popular and descriptive "hot 26" are also options.

Now time for a savasana.