While Shakespeare may have wondered “what is in a name?”, the executives at Peloton believe that the trademark SPIN is of great importance. Last month (February, 2021), Peloton filed petitions to cancel the trademarks SPIN and SPINNING for physical fitness instruction and for stationary exercise bicycles on the grounds that the marks are generic. Mad Dogg Athletics, located in Venice, CA, is the owner of the trademarks SPIN and SPINNING. Mad Dogg registered SPIN on the principal register in 1998 and SPINNING in 1993. In its petition, Peloton asserted that Spin classes and spin bikes are part of the fitness lexicon and that Mad Dogg’s trademarks for SPIN and SPINNING have become generic. Peloton cited to Internet evidence, including memes, to support its argument that the terms SPIN and SPINNING have become generic.
It is a serious issue for a trademark owner if their trademark becomes generic. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. Put in common parlance, if the general public primarily understands the word to designate the product rather than the producer, the word is generic. Generic terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Supplemental Register or on the Principal Register after having acquired secondary meaning.
There is a two-part test used to determine whether a designation is generic: (1) What is the class of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? The test turns upon the primary significance that the term would have to the relevant public.
While a generic term cannot become a trademark, a trademark can become generic. Ironically, the more popular a trademark becomes, the more likely it is that a trademark will become generic, causing the trademark owner to lose its exclusive right to use and protect the trademark. This is commonly referred to as Genericide.
Consider some of the brands that were once protectable trademarks and are now generic – Elevator, Cellophane, Aspirin, Murphy Bed, Thermos, even YoYo. Once a mark becomes generic, it loses its trademark protection and becomes available to the public. If it wasn’t already, it should now be clear the reason behind Peloton’s petition. If Peloton wins, it can then refer to its stationary cycles and classes by using the word SPIN and SPINNING without fear of infringing Mad Dogg’s trademarks.
Genericide does not happen overnight and mark owners whose marks are at risk of falling victim to “genericide” need to be active in preventing it. The key is to educate the public that the mark is the source of the product and not the product itself. Consistent use of the ® or ™ symbol and also using the brand name along with the general name such as Kleenex brand tissue is a way brand owners can attempt to avoid genericide. Xerox ran an advertising campaign “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”
It’s too early to tell whether Peloton will amass enough evidence to establish that SPIN and SPINNING are generic. Mad Dogg has been active at the TTAB and apparently spends hundreds of thousands of dollars each year protecting its trademark. One can assume that this will be an aggressively fought case by both parties. Mad Dogg has already called Peloton’s petition meritless and accuses Peloton of filing the petitions in retaliation for Mad Dogg’s patent infringement lawsuit it filed against Peloton in December 2020.
Scott discusses this topic with Josh Escovedo in an episode of The Briefing by the IP Law Blog. You can listen to the podcast here.