Apr 2021

The Tug of War over Words on the Trademark Battlefield

It is hardly breaking news when The U.S. Patent and Trademark Office (USPTO) turns away a trademark application that presents a generic expression for approval. The USPTO would never approve, for example, an application by a professional basketball franchise that sought to trademark “basketball” standing alone.

It is breaking news, however, when a trademark owner spends tens of thousands of dollars in a well-focused campaign designed to stop businesses from using what the public would instinctively agree are generic terms.

Such is the case with the use of the words “spin” and “spinning” in the fitness industry, now the subject of all-out trademark war.

In January 2001, Mad Dogg Athletics, based in California, registered those words with the USPTO.

This past February, twenty years later, Peloton Interactive, Inc., which entered the spin bike market in 2012, filed with the USPTO a Petition to Cancel the trademark.

Peloton asserts that the words “spin” and “spinning” have become generic and charges Mad Dogg Athletics with “abusively” [enforcing] its improper trademark rights across the spinning industry.”

According to the Petition, Mad Dogg, for many years, has slammed fitness industry participants, and even bloggers and journalists, with countless “cease and desist” demands, threatening “expensive litigation” if they don’t stop using those two words.

Peloton’s response, in a nutshell, is that “spin” and “spinning” have become an integral part of “exercise vocabulary.”

Ask yourself: How many people do you know who have taken a spin class?

It is not likely the USPTO will resolve this dispute until late 2022. In the meantime, spin classes will proceed unabated—at least remotely.

In the world of trademark, the Mad Dogg Athletics controversy underscores the vital importance of understanding the interplay between language and the market in which it is used. If you are considering a trademark and have any doubt, reach out to Carrie Ward at 856-354-7700 or email her at cward@earpcohn.com. It is essential to choose your words wisely.