Friday, 19 February 2021 22:53

Is “SPINNING” Generic? Peloton Says Yes and Filed 5 Petitions to Cancel Trademark Registrations

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On February 16, 2021, Peloton Interactive, Inc. (Peloton) filed five (5) Petitions to Cancel at the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board against Mad Dogg Athletics, Inc. (Mad Dogg).  Mad Dogg owns trademark registrations for “SPINNING”, “SPIN”, and “SPIN PILATES”.  U.S. Trademark Reg. 1,780,650 for “SPINNING” was filed on October 9, 1992, registered on July 6, 1993, and has its date of first use dating back to March of 1982.

In its Petition, Peloton alleged “[t]he terms SPIN and SPINNING are generic, and Mad Dogg should be barred from continuing to abusively enforce its improper trademark rights across the spinning industry.”  Peloton alleged “spin class” and “spin bike” are part of the fitness lexicon and that SPIN and SPINNING are generic terms to describe a type of exercise bike and associated in-studio class.  Peloton alleged “spin bikes” have become immensely popular in recent years because of the community and motivation provided by spin classes, 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.  See Petition to Cancel, pp. 6.  Peloton cited to Internet evidence, including memes, to support its argument that the terms SPIN and SPINNING have fallen victim to genericide.

Genericide is the process by which a trademark owner loses trademark rights.  Generic terms are not eligible for trademark registration and protection because the relevant purchasing public understands them primarily as the common or class name for the goods or services.  See TMEP § 1209.01(c).  Some examples of trademarks which have fallen victim to genericide include: Escalator, Aspirin, Trampoline, Videotape, Zipper.  After five (5) years on the Principal Register and consistent use from the date of registration, a trademark becomes “incontestable”.  An incontestable trademark may not be challenged absent at least one of the few exceptions applying, such as the trademark becoming generic.  See 15 U.S.C. § 1064.

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Emily Mola

Ms. Mola earned her Bachelor’s degree in History, magna cum laude, from the Florida International University, and a Juris Doctor degree and Certificate in Intellectual Property Law from the Florida International University, College of Law. While at FIU Law, she served as the President of the Intellectual Property Student Association. As a result of her dedication to intellectual property law, she earned three CALI Excellence for the Future Awards in focused academic coursework. Ms. Mola is the recipient of the International Trademark Association’s 2020 Ladas Memorial Award for her article, Trademark Law’s Capability to Protect Traditional Cultural Expressions from Unauthorized Borrowing and Theft. Ms. Mola is a 2018 Microsoft/Hispanic National Bar Association’s Intellectual Property Legal Institute scholar.