DuetsBlog Collaborations in Creativity & the Law

A Trademark Spinning Out of Control?

Posted in Almost Advice, Articles, Branding, Genericide, Loss of Rights, Marketing, Trademarks

With the upcoming 2012 presidential election, this is the time during our American political cycle where spinning is almost a sport — at least an expected activity. Puns intended, as you’ll see.

Over the last several years, I’ve heard my wife speak about “spinning classes” at a local health club (mind you, not at the local political party caucuses) – so, a different type of spinning altogether. This spinning, I’ve come to learn, involves “classes centered around choreographed group rides on stationary bikes, usually led by an instructor with heavy background music to keep you moving.”

So, after a loyal DuetsBlog reader brought these Spinning (note the capital S) trademark use guidelines to my attention, I felt compelled to ask my wife whether the spinning she had often spoken of was a branded activity or a generic one that anyone could offer. She indicated the latter (along the lines of pilates, yoga, or karate), and trust me, those in my house are well-educated about the difference between brands and generic terms.

Having said that, what my wife didn’t know is that one of her other favorite activities called ”pilates,” was once a registered trademark, and as of at least 2000, it was found generic and to be part of the public domain as the common generic name for an exercise method, not a trademark. And, she also didn’t know that Mad Dogg Athletics, Inc. owns a large collection, dare I say, family of SPINNING and related trademarks:

  1. SPINNING in Int’l Class 41 (training and instruction);
  2. SPINNING in Int’l Classes 9, 25, and 28 (videos, clothing, and exercise equipment);
  3. SPINNING in Int’l Classes 9 and 16 (computer software and manuals);
  4. SPINNING in Int’l Class 32 (sport drinks);
  5. SPINNING in Int’l Class 5 (nutritional supplements);
  6. SPINNING in Int’l Class 12 (bike parts);
  7. SPINNING in Int’l Classes 3 and 18 (non-medicated lotions and sports bags);
  8. SPINNING in Int’l Class 41 (providing facilities for recreation);
  9. SPINNING in Int’l Class 41 (providing information over the Internet);
  10. SPINNER in Int’l Class 28 (exercise equipment);
  11. SPIN in Int’l Classes 28 and 41 and (stationary bicycles and physical fitness instruction); and
  12. SPIN in Int’l Class 5 (nutritional supplements).

So, what will be the long term fate of this impressive “family” of trademarks? Will the fate be the same as the “pilates” term, or will the referenced trademark use guidelines save the day for Mad Dogg? As we have cautioned before, here and here, the Spinning guidelines correctly discourage lower case type styles (i.e., no “spinning” or “spinner” uses, please), they also discourage verbing (i.e., no “Come spin with us,” please), and they also discourage nouning (i.e., no “Get Spinning,” please). But, I’m sorry, I thought “spinning” was a verb?

Well, I wouldn’t hold your breath (on the trademark use guidelines saving the day), while riding your stationary cycle anyway (especially if combined with any pilates activity, as breathing is quite important to, at least, the pilates method, I’m told).

Now, if you’re steadfast in preventing your trademark from spinning out of control and degenerating into a generic term, would you link it to other known generic exercise terms and methods? You might be surprised to learn that these three composites are currently federally-registered trademarks of the same Mad Dogg owner: SPIN FITNESS, SPIN PILATES, and SPIN YOGA (fitness, pilates, and yoga, all disclaimed). I’ll have to say, these combinations seem like a recipe for a trademark disaster.

Perhaps most surprisingly the Spinning trademark use guidelines state:

“The word Spinning as it pertains to indoor cycling was coined by our company, and is an arbitrary word we selected for our stationary bicycle exercise program. We also coined the name Spinner for our stationary exercise bicycle.”

Are you buying this birth story? Wouldn’t an admission of suggestiveness garner more credibility without sacrificing inherent distinctiveness, at least at birth?

Let’s just say, when the wheel on the stationary bike goes round and round, another more efficient way to communicate the same motion is to say it spins or is spinning. Coined? Arbitrary? Really?

And, as you will recall, one of the points I’ve made before about avoiding the hazards of trademark genericide, especially when a new product or service launches an entirely new category (as the case appears to be here with Spinning, since Mad Dogg’s website lauds itself as the ”Creators of Indoor Cycling”) is to make sure the brand owner also adopts a commercially acceptable generic term for the good or service — one that easily will be used and embraced by the relevant comsuming public.

Remember how it took Rollerblade ten costly years of trademark misuse in the public to come up with the efficient generic designation ”in-line skates”? — having started out with the far more wordy and complex ”boots equipped with longitudinally aligned rollers used for skating and skiing.” I see that the Spinning website nicely refers to “indoor cycling” – yet, here is the twenty year old relic from one of its early trademark filings: “providing training and instruction to others by simulating an outdoor bicycle workout completed indoors on a stationery bicycle.” 

In the end, do you believe that a majority of the relevant consuming public views Spinning as a brand name or the generic name for an activity or method of exercise?             

So, I must ask you dear readers, is the Spinning trademark spinning out of Mad Dogg’s control, or should we be asking the question in past tense?