By Matt Romano

 

If you have gone to a gym in the last twenty years, you are probably familiar with “spin’ or “spinning” classes. If you are not familiar, they are just exercise classes that take place on a stationary bike. You probably haven’t heard of Mad Dogg Athletics (“MDA”) though, unless you have tried to offer a spinning class yourself. MDA is a stationary bike manufacturer who  has had trademarks on the terms “spin” and “spinning” within the fitness industry since the early 1990s.[1] For years, the company been spending hundreds of thousands of dollars per year on litigation to aggressively enforce these marks across the globe.[2]  This week, Peloton, stationary bike company you’ve actually heard of, filed a petition with the US Patent and Trademark Office’s Trademark Trial and Appeal Board claiming that these trademarked terms MDA has been “abusively enforcing” have now become generic terms within the fitness lexicon.[3] In the petition, Peloton urges “[e]nough 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.”[4]

 

Peloton seems to have a point. Under 15 U.S.C.A § 1064, a petition to cancel the registration of a mark may be filed at any time on the grounds that the registered mark has become “a generic name for the goods or services for which it is registered.”[5] Whether a mark has become generic depends on how it is perceived by the relevant consuming public.[6]Different courts have different ways of doing this analysis, but I thought the Ninth Circuit’s “who-are-you/what-are-you” test explains it well.[7] Under this test, if the relevant public primarily understands a mark as describing “who” a particular good or service is, or where it comes from, then it is valid.[8] However, if the relevant consuming public primarily understand the mark as describing “what” the particular good or service is, then the mark has become generic.[9] Based on this test, I don’t see how MDA can possibly maintain these trademarks. As Peloton points out in the petition, “even five minutes of simple Google searching reveal[s] that everyone in the world — other than Mad Dogg — understands that ‘spin’ and ‘spinning’ are generic terms to describe a type of exercise bike and associated in-studio class.”[10] It’s hard to argue with Peloton there, but, just in case, I did some Google searching myself and it’s pretty undeniable. For example, I googled “spinning near me,” and the first result is Google Maps showing all of the nearest gyms and studios offering cycling classes. None of these places were affiliated with MDA. Moreover, I also stumbled upon the Wikipedia page for “indoor cycling,” where the first sentence reads “indoor cycling, often also called spinning…”, but it makes no mention of MDA in the article.[11]

 

In response Peloton’s petition, MDA called it “meritless” and claimed that it is “little more than retaliation for [MDA]’s patent infringement lawsuit filed against Peloton in December 2020 seeking relief for Peloton’s misuse of [MDA]’s patented technology.”[12] While it very well be a retaliation to the MDA’s suit, calling it meritless seems pretty, well meritless. And since MDA brought up retaliation, it is worth noting that MDA was forced to file Chapter 11 in 2019 due in part to its inability to compete with Peloton in the in-home indoor cycling market after investing in it heavily.[13] In addition, this patent suit comes on the heels of Peloton making over a billion dollars in the final quarter of 2020 alone doing exactly what MDA has failed at.[14]

 

[1] See Mike Masnick, ‘Spinning’ Trademarked; Gyms Being Threatened For Holding Spinning Classes Sans License, TechDirt (Dec. 29, 2010), https://www.techdirt.com/articles/20101227/17284312425/spinning-trademarked-gyms-being-threatened-holding-spinning-classes-sans-license.shtml.

[2] See Timothy Geigner, Peloton Seeks To Invalidate ‘Spinning’ Trademark Held By Trademark Bully, TechDirt (Feb. 18, 2021), https://www.techdirt.com/articles/20210217/07425646259/peloton-seeks-to-invalidate-spinning-trademark-held-trademark-bully.shtml.

[3] See id.

[4] See Rob Lenihan, Peloton Spin-Trademark Argument Meritless, Mad Dogg Athletics Says, TheStreet (Feb. 23, 2021), https://www.thestreet.com/investing/peloton-spin-trademark-fight-meritless-mad-dogg-says.

[5] 15 U.S.C.A. § 1064 (2006).

[6] See, e.g., Threshold Enterprises Ltd. V. Pressed Juicery, Inc., 445 F.Supp.3d 139, 148 (2020).

[7] See id.

[8] Id.

[9] Id.

[10] Lenihan, supra note 4.

[11] Indoor Cycling, Wikipedia, https://en.wikipedia.org/wiki/Indoor_cycling.

[12] Lenihan, supra note 4.

[13] See Thomas J. Ryan, Mad Dogg Athletics Lands In Bankruptcy, SGB Media (Aug. 8, 2019), https://sgbonline.com/mad-dogg-athletics-lands-in-bankruptcy-court/.

[14] See Lauren Thomas, Peloton Quarterly Sales Top $1 billion, But Shares Fall as Cycle Maker Steps Up Further Supply Chain Investments, CNBC (Feb. 4, 2021), https://www.cnbc.com/2021/02/04/peloton-pton-reports-q2-2021-earnings.html.

Image Source: https://cdn11.bigcommerce.com/syn8q9n4bvw/product_images/uploaded_images/2/2017/01/Spinning-2017-Class-Experience.jpg