June 16, 2014

Pilates: A Deep Stretch of Trademark Law

Well, I'm back. As you may recall, I just spent the week in beautiful sunny Puetro Morales, Mexico at a Bikram yoga retreat. No tv and shoddy internet resulted in lots of shadow puppets, but also resulted in many interesting philosophical conversations including why some studios call the infamous serious of 26 poses "hot 26" and why some studios call the series "Bikram Yoga". This raised the question of why "Bikram Yoga" was still able to function as a trademark, but "Pilates" was not.

You workout fanatics may be familiar with Pilates, which is a system of exercise developed by Joseph Pilates in the 1920s. In 1925, Pilates opened his first Pilates studio in New York City with his wife Clara. Pilates never sought to obtain federal registration of the term "Pilates", but Pilates, Inc., filed two applications for registration of "Pilates" -- one in connection with "exercise instruction services" and the other for use on or in connection with "exercise equipment."

Muybridge Joseph Pilates Sequence

Pilates demonstrating a sequence

However, in 2000, the Southern District of New York that "Pilates" trademark was a generic term for a type of fitness method, similar to "yoga" or "karate." The court ruled that "Pilates" was no longer capable of functioning as a source identifier. Since "consumers identify the word 'Pilates' as a particular method of exercise," the Court found that it could not be monopolized by the plaintiff. The court acknowledged that everyone associated term "Pilates" with the form of exercise in general rather than as an origin of services. In fact, Pilates, Inc. even used the term generically during the trial, which did not go unnoticed by the court. In her 93-page opinion, U.S. District Court Judge Miriam Cedarbaum directed the United States Patent and Trademark Office to cancel the marks immediately.

Pilates enthusiasts considered this decision to be quite a victory. The general public now has an easier time locating studios, which were previously prevented from saying they taught Pilates, and instructors are now able to describe their courses as Pilates. In short, the decision gave the public greater access to Pilates. So this begs the question...why is Bikram yoga any different? Stay tuned to find out.

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