Despite some long overdue optimism appearing on the horizon, the pandemic has had a devastating effect on large parts of the economy. That said, whilst some sectors have found the going incredibly tough, others have thrived. One sector which has done particularly well is the home-exercise industry.
A good example of a company which will likely emerge out of the pandemic far stronger than they entered it, is Peloton®. The company reported growth of over 200% last year and that is expected to rise in 2021. Peloton® equipment combine a stationary exercise bike with an interactive tablet that allows the rider to take part in group training sessions remotely – ideal for those missing out on their regular fix of gym classes.
Most people today have heard of or tried a spin class. “Spinning” is heralded as a great form of exercise, and only requires a stationary bike (and sometimes an encouraging instructor). What people may not know however, is that the terms SPIN® and SPINNING® are actually registered trade marks. The trade marks are owned by a US company, Mad Dogg Athletics, Inc, and the marks are registered in various jurisdictions (including the UK).
Madd Dogg has recently brought a claim against Peloton® in the United States for patent infringement. Following the raising of those proceedings, it has come to light that Peloton® have responded by seeking to have Madd Dog’s trade marks for SPIN® and SPINNING® revoked by the US Patent and Trademark Office. The marks have been registered by Mad Dogg since the mid to late 1990s. Despite this, Peloton® are arguing that the terms should not be capable of protection as trade marks as they have now entered the fitness lexicon and are generic terms for any kind of stationary indoor bike exercise class. Unsurprisingly, Mad Dogg have denied this and explain that they pay millions of dollars each year to protect their trade marks. They call Peloton®’s case “meritless” and a retaliatory act taken only because of the patent infringement action.
Mad Dogg’s SPIN® and SPINNING® mark
Whilst it is a matter of fact that the words SPIN® and SPINNING® are used generically by much of the public, it is also clear that Mad Dogg have taken steps to ensure that other companies and brands are not able to use these terms to promote their own products or classes. Often gyms will refer to these classes as “cycle” classes or other terms which stay away from using any of Mad Dogg’s registered marks.
Perhaps unsurprisingly given the wide use of these terms, this is not the first time that Mad Dogg has required to defend its trade marks. In 2012, a Czech company who were operating under the name Aerospinning Master Franchising filed an application under the EUIPO for revocation of the “spinning” mark on the basis that it has become common vernacular when referring to indoor cycling. Ultimately, Mad Dogg were successful, and the registration continued. Mad Dogg also won a trade mark battle in 2019 against a studio in Bath called “Spin Village”, who were forced to change their name.
The process whereby a registered trade mark starts to become used generically, losing its distinctiveness and consequently its value, is known as “genercide”. Genericide is a significant problem for brand holders and famous examples include: Sellotape, Asprin and Frisbee. Uniqueness and distinctiveness are major requirements for a valid trade mark. If these begin to erode, there is a question as to whether a valid trade mark still exists. Ironically, genercide becomes a particular issue when a mark is so popular that its use becomes interchangeable with the product or activity with which it is connected (e.g. “yo-yo”).
Ultimately, it will be for the US Patent and Trademark Office’s Appeal Board to decide whether the characteristics of a trade mark are still present with respect of the SPIN® or SPINNING® marks. Should the USPTO determine that the terms are no longer protectable, this would have a significant impact on Mad Dogg’s business and the value of their brand. We could also expect to see Peloton® or others take similar steps in other jurisdictions, including the UK, to have Mad Dogg’s trade marks cancelled.
How to avoid the pitfalls of Genericide
Clearly, losing a trade mark can be devasting to a business and related brand. Ensuring registered marks are properly protected is essential to avoid the value in the mark being diminished or ultimately destroyed. Some steps which brand holders should take to avoid these pitfalls include:
Register your trade mark. It sounds obvious but the best way to ensure your mark is protected is to register it as a trade mark. In advance of trying to register a mark it is sensible to seek some advice on whether or not the mark can be registered (either to ensure it meets the minimum requirement of a trade mark or that there are no other similar marks already registered).
Consider jurisdiction. You may have your trade mark successfully registered in the UK, but do you also operate within the EU? Or the US? Differing rules and registrations apply to jurisdictions outside the UK, and you should be aware that you may need multiple trade marks depending on the locations in which you operate.
Tell people it’s registered. Again, it may go without saying but there is no point in having a registered trade mark if steps are not taken to make clear to the public it is registered. As an example, Mad Dogg have a full section on their website talking about the SPIN® brand. Another easy way to inform the public of your brand is to follow it with the ® symbol whenever it is used. This identifies the mark as a legally registered trade mark.
Monitor use of your trade mark. There are various online monitoring services which will either allow you (or the monitoring provider) to have online links which infringe your trade mark removed or at least alert you to when your mark is being used online without your permission. In addition, “watch notices” will alert you to any instances of a trade mark application which infringes your mark.
Act fast. Where there are particularly egregious or persistent offenders, it may be necessary to bring enforcement actions against trade mark infringements. In this regard, the Scottish IP Court offers a rights-holder friendly forum for the quick and cost-effective resolution of IP disputes.
Whilst brands may consider taking some of these steps an unnecessary expense, especially where the infringer is a smaller business, the trickle effect of inaction could well lead to issues such as genericide and loss of value of a brand in the long run. Certainly, Mad Dogg will be hoping that SPIN® doesn’t join the likes of Trampoline, Dry Ice and Escalator in the trade mark grave yard any time soon.
Article co-authored by Melissa Laurie.