Aspects of the Trademark Modernization Act: Letters of Protest
Peloton Interactive, Inc. cranked up the resistance against Mad Dogg Athletics, Inc.’s tactics of aggressively enforcing its registrations of SPIN and SPINNING. Pressing down on the red button, so-to-speak, Peloton filed petitions to cancel Mad Dogg’s registrations of SPINNING, SPIN, and SPIN PILATES on the ground that “SPINNING” and “SPIN” are generic.
Proving a mark has become generic is a heavy climb. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services and not a term that is capable of serving a source identifying function. Mad Dogg has owned one registration of SPINNING use in connection with “providing training and instruction to others by simulating an outdoor bicycle workout completed indoors on a stationery bicycle” since 1993 and another registration of SPINNING for use in connection with “providing facilities for recreation, physical fitness, exercising activities, fitness instruction, and fitness consultation.” Mad Dogg has owned its registration of SPIN for use in connection with “stationary exercise bicycles” and “physical fitness instruction” since 1998, and its registration of “SPIN PILATES” for use in connection with “providing physical fitness instruction and consultation in the fields of health and exercise; health club services, namely, providing instruction and equipment in the field of physical exercise” since 2007.
However, just because Mad Dogg may at one point have been able to claim rights in these terms as trademarks does not mean Mad Dogg can still assert rights in these terms as marks. Trademarks can become generic and lose their ability to function as trademarks over time when they are commonly used to describe a product or a group of products rather than identify a source. For instance, Aspirin, Escalator, Thermos, and Cellophane are good examples of terms that once functioned as trademarks, but are now generic terms. These marks were so commonly used to describe a product in society that they lost their ability to function as a trademarks. Peloton argues that the same thing has happened to “spin” and “spinning.”
In its petitions to cancel Mad Dogg’s registrations, Peloton asserts 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.” To support its claims, the petitions cite reviews of spin bikes provided by Peloton, SoulCycle, Flywheel, NordicTrack and others and cites articles about “spinning” in notable publications, all of which use “spin” or “spinning” generically. The petitions even site to an article that discusses that “spin” and “spinning” are generic terms “because of the popularity of the products and classes.”
I’ll admit that I use “spin” generically; my calendar says “spin” every morning. The question is whether the Trademark Trial and Appeal Board agrees. Stay tuned to see how this ride ends.