On February 16, 2021, Peloton Interactive, Inc. (Peloton) filed two powerfully articulated petitions with the USPTO’s Trademark Trial and Appeal Board (TTAB). In both of the petitions, Peloton claimed that, for years, an innumerable amount of fitness industry participants, including Peloton, have received unfounded cease and desist letters from their competitor, Mad Dogg Athletics (Mad Dogg) and its lawyers, threatening them with pricy litigation if the use of the terms SPIN and SPINNING continued. Peloton further accused Mad Dogg of using phony, coercive tactics to preserve what Peloton perceives to be an unfair monopoly over a generic term, stating: “Enough is enough. It is time to put a stop to Mad Dogg’s tactic of profiting by threatening competitors, marketplaces, and even journalists with enforcement of generic trademarks.”
The Peloton case is quickly becoming one of the most highly observed cases by intellectual property lawyers around the country, bringing to light the “genericide” legal concept, as well as the dangers of aggressive enforcement of trademarks.
So, what exactly is “Genericide”? Genericide is when a trademark that starts off as “valid and protectable” loses its distinctiveness when “a majority of the relevant public appropriates the trademark as the name of a product.”[1] Genericide usually occurs when one of two things occur: either the trademark owner fails to police its own brand, resulting in extensive use by its competitors; or the mark becomes so generic in nature that there is no other way to refer to similar products other than by the trademarked name.[2] Often, the use of the brand as an adjective or noun is telling as to whether a mark has become generic. For example, the famous brand Xerox is currently battling genericide. Do you Xerox a piece of paper, or do you make a Xerox copy of the paper? The former shows how the terms has become generic, whereas the later shows the use of the term Xerox as a brand. Xerox has developed an in-depth advertising campaign in an attempt to fight genericide Some brands that are in the trademark graveyard include thermos, yo-yo, and escalator.
A trademark application may be refused or challenged based on the ground of its genericness. See 15 U.S.C. §1064(3). There is one vital issue used to determine whether a mark is generic: “whether members of the relevant public use or understand the term sought to be protected to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986). The genericide determination requires a two-part test: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?” Id. at 990.
Aggressive enforcement of trademarks, or trademark bullying (as its often referred to), is a practice in which the trademark owner, who has significant resources, uses overly aggressive tactics “to enforce its trademark beyond what the law allows, is an effort to bully a smaller target entity without the financial means to respond.” Hard Rock Café Int’l United States Inc., v. Rockstar Hotels, Inc., 2018. U.S. Dist. Lexis 227013 (S.D. Fla. June 13, 2018). According to Peloton’s petition, Mad Dogg’s founder, John Baudhuin, has publically admitted that his company spends “hundreds of thousands of dollars a year” policing its trademark and tracking down infringers, which Peloton describes as doubling down on “its poor choice of names by expending significant time and money securing trademark registrations for the generic SPIN and SPINNING terms,” which are now the subject of Peloton’s TTAB’s petitions for cancellation proceedings.
Mad Dogg Athletics has held the trademark registration for the marks SPIN and SPINNING since July 1998 and October 1996 respectively. [3] Despite the terms being generic, Mad Dogg has held a strong grasp on the trademarks, that is, until they messed with the wrong company.
The group “Mocha Spin Docs” first uploaded their video to the Peloton YouTube channel on August 27th, 2020, self-described as a “sisterhood of black women physicians” who loved their Peloton bike experience.[4] According to Peloton’s petition, Mad Dogg caught wind of the YouTube video and objected, demanding that Peloton remove it on the sole basis of the use of the word SPIN, prompting Peloton to seek cancellation of Mad Dogg’s trademark registration.
Peloton’s petitions, one seeking cancellation and the other partial cancellation of the trademarks, list several compelling facts. Among those facts is the definition of Spin bikes, which Peloton defines as “a type of indoor exercise cycle that closely mimics the ride of an actual bike, including the ability to stand up on pedals (like on a real bike).” They further define spin classes as “typically held at a gym or workout studio, where multiple spin bikes are placed in a room, usually close together, with an instructor in front. The class usually involves loud music, energetic instructions and a community atmosphere of encouragement and competition.” A Google search also lists a variety of different companies such as Peloton, SoulCycle, Flywheel, NordicTrack, among others, in reviews by various publications.
To add to the list of compelling reasons to terminate Mad Dogg’s registrations of their Spin marks, Peloton states that “five minutes of simple Google searching” . . . makes it easy to see that “everyone in the world, other than Mad Dogg, believes that ‘spin’ and ‘spinning’ are generic terms to describe a form of exercise bike and in-studio class.” Peloton then aggressively proceeds to make their point by adding a fully-charged list of examples from their Google search. Peloton’s search includes Wikipedia and Urban Dictionary as well articles, which include some from publications such as The New York Times, The Washington Post, Bloomberg, and TeenVogue, to name a few. In a piece by the online outlet TechDirt, it reported on the “spin” and “spinning” phenomenon best whenit reported that, “Much like other types of workout classes, nobody sees spinning as a source identifier. . .Nobody thinks of Mad Dogg Athletics. Hell, most people haven’t even heard of MDA. . .The term spinning is generic. It just is.”
With all the examples and evidence raised by Peloton, it appears that their prayer for relief that the registrations may be cancelled, whether in full or in part, may, pursuant to 15 U.S.C. §1064(3), be granted in their favor.
[1] https://plus.lexis.com/api/permalink/ecc0e8bc-5603-4463-8698-ba61a9251497/?context=1530671
[2] Id.
[3] Trademark Status and Document Retrieval for registration number 2173202 and 2003922.
[4] https://www.youtube.com/watch?v=_rskpw57ppg
This blog article was written by Eva Sarmiento, legal intern at Assouline & Berlowe and JD candidate 2021 at Nova Southeastern University Law School, (edited by Greg M. Popowitz, Esq.)
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