Why big brand names fear being victims of ‘genericide’ - Neeraj Thomas

Home fitness is one of those fortunate business sectors to have thrived during the course of the pandemic. Peloton, a company which combines a stationary exercise bike with digital technology to deliver interactive cycling experiences, is a prime example, reporting growth of over 200 per cent last year.

Exercise bike firm Peloton claims the terms SPINNING® or SPIN® shoud no longer be protected as the trade marks of US-based Madd Dog Athetics​​​​​​​

It hasn’t all been smooth sailing, or peddling for that matter, as Peloton is now facing legal action from US-based Madd Dog Athletics for patent infringement.

Peloton has responded by seeking to have Madd Dog’s trade marks for both SPINNING® and SPIN® revoked by the US Patent and Trademark Office (USTPO), arguing these are now generic terms for any kind of stationary indoor bike exercise class and used widely across the fitness sector. The words “spin” and “spinning” were registered as trade marks by Mad Dogg in the 1990s.

Mad Dogg denies Peloton’s counterclaim, pointing to other cases where it has successfully defended its registered trade marks. This includes a 2012 action against Czech-based Aerospinning Master Franchising, which had filed an application under the EUIPO for revocation of the term ‘spinning’ as a trade mark on the basis that it has become common vernacular when referring to indoor cycling. Mad Dogg also won a 2019 case against Spin Village, an exercise studio in Bath which was forced to change its name.

Neeraj Thomas, Of Counsel and IP specialist, CMS

In this current action, it will be for the appeal board of the USPTO to determine whether the terms SPINNING® or SPIN® still retain the characteristics of a trade mark. Should it be decided they are no longer protectable, it would have a significant impact on the value of Mad Dogg’s brand as we would see a likely influx of others in the global fitness sector starting to use these words as generic terms, a process known as genericide.

Sellotape, Aspirin, Yo-yo and Frisbee are all examples of brand names which have suffered from genericide. They have all been extremely popular and have fallen victim to their own success, becoming interchangeable with the product or activity with which they’re associated. Uniqueness and distinctiveness are major requirements for a valid trade mark and when these begin to erode, problems can arise.

Ensuring registered trade marks are properly protected is essential in preventing their potential diminishment and destruction from genericide. There are some important steps for brand holders to follow to avoid these pitfalls.

The first and most obvious step is to register the trade mark. This process should start with support from an expert to confirm a mark meets the minimum requirement for registration and that no similar marks are already registered.

Jurisdiction is another consideration as registration may be required in multiple countries depending on other locations where a brand holder might operate.

Once a trade mark is registered, it’s important to promote this fact to the wider public. A simple way to achieve this is to use the ® symbol when referring to a registered trade mark to show it is legally registered, but it would be advisable to also highlight this through other communications channels. Mad Dogg has a full section on its website about its SPIN® brand.

The use of a registered trade mark should then be carefully monitored. There are various online monitoring services which allows brand holders to address any infringements quickly.

Where there are particularly egregious or persistent offenders violating a registered trade mark, the brand holder will want to consider taking enforcement actions. In this regard, the Scottish IP Court offers a rights-holder friendly forum for the quick and cost-effective resolution of IP-related disputes. While there may be a question about incurring expense to protect a trade mark when an infringer is a smaller business, it’s important to consider the trickle effect of inaction which could lead to genericide and loss of a brand’s value over time.

Mad Dogg is hoping to avoid this scenario in its current case against Peloton. The ruling will likely determine whether they can successfully protect their ownership of their SPINNING® and SPIN® brands or if they will join the likes of Trampoline, Dry Ice and Escalator in the trade mark graveyard.

Neeraj Thomas, Of Counsel and IP specialist, CMS