“If Mad Dogg has been using its marks continuously since the 1990s and has been enforcing its marks, as Peloton’s petitions for cancellation state, it will set a dangerous precedent for the TTAB to cancel Mad Dogg’s marks.”
Peloton’s petitions to cancel Mad Dogg’s registered trademarks for SPIN and SPINNING (in Classes 41 and 28) for genericism ask the Trademark Trial and Appeal Board (TTAB) to do what it has rarely done before – cancel marks that were distinctive at the time of filing for losing distinctiveness due to the public’s overuse of the terms.
While the TTAB has refused to register or cancel registered marks that were generic terms at the time the trademark applications were filed, the TTAB has rarely cancelled a mark that was distinctive when registered, but over time, became a generic term and lost its distinctiveness, as Peloton argues in its petitions. For example, “Kleenex” is often referenced when discussing generic brands, and while Kimberly-Clark Corporation has faced petitions for cancellation of its “Kleenex” mark, “Kleenex” has remained a registered mark of Kimberly-Clark Corporation since 1924.
The TTAB Test
To determine whether a mark is generic the TTAB uses a two-part test: (1) what is the genus of goods or services at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services? H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 728 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). Peloton will need to prove its claim by a preponderance of the evidence. Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19 U.S.P.Q.2d 1551, 1554 (Fed. Cir. 1991); Maktab Tarighe Oveyssi Shah Maghsoudi v. Int’l Assoc. of Sufism, No. 23,044, 1999 WL 381022, at *7 (June 3, 1999) (“[P]laintiff’s burden of proof is the preponderance of the evidence and there is no resolution of doubt in respondent’s favor.”).
The second part of the two-part test, the public’s perception, is the primary consideration in determining whether a term is generic. Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 U.S.P.Q.2d 1458, 1462 (T.T.A.B. 2014). According to the TTAB, evidence of the public’s understanding of a term may be found in newspapers, magazines, dictionaries, trade journals, catalogs, and other publications. In re Leatherman Tool Group Inc., 32 USPQ2d 1443, 1449 (T.T.A.B. 1994), citing In re Northland Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir. 1985).
In its petitions, Peloton cites articles from the Washington Post, the New York Times, Time Magazine and other sources that use the terms “Spin” and “Spinning” as evidence that Mad Dogg’s registered Marks are generic. However, other than urban dictionary and Wikipedia (which is not a dictionary), Peloton cites to no other dictionary evidence. Notably, even if Peloton had reputable dictionary citations, dictionary evidence alone is not enough to prove genericness. See In re Minnetonka, Inc., 212 U.S.P.Q. 772, 778 (T.T.A.B. 1981) (Dictionary definitions cannot be conclusive of genericness, “if for no other reason than that this would endow editors of such works with the power to destroy trademarks, merely be defining them generically.”)
Proving Genericism: A High Hurdle
Using the mark in a generic way in newspapers and other articles can be evidence that the public perceives the mark to be generic, especially if the mark is used in lowercase letters instead of uppercase letters. In Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., the court noted “[m]any instances in the record where the term ‘pretzel crisps’ is set forth in lower case, with no apparent reference to the term as a brand, or to Defendant, indicating an understanding by the relevant public that the term ‘pretzel crisps’ refers to a product rather than to a single producer thereof.” 124 U.S.P.Q.2d 1184, 1190 (T.T.A.B. 2017). However, where use of the mark in the media is mixed, it is insufficient proof of generic usage. See Baroness Small Estates, Inc., 104 U.S.P.Q.2d 1224, 1228, 2012 WL 4763149 (T.T.A.B. 2012) (“A mixture of uses,” some generic, some not, was “not sufficient to show, by clear evidence” that a term was generic.). Here, Peloton references news articles and other publications that reference “spin” or “spinning in lowercase letters. However, since Mad Dogg has not filed its answer to the petition, it is not clear whether Mad Dogg has evidence of “Spin” or “Spinning” being used by the media as a brand.
In addition to dictionaries and articles, Peloton will likely need to conduct a consumer survey showing that more than 40% of consumers think “Spin” or “Spinning” is a generic term and that consumers do not associate the mark “Spinning” with a brand. In Frito-Lay, the TTAB found that the mark “Pretzel Crisps,” which had been registered on the supplemental register, had not acquired secondary meaning and was generic for pretzel crackers. 124 U.S.P.Q. at 1204, 1206. Although the survey results conducted by the parties in Frito Lay were ultimately not considered, the Court noted that if they had been considered, they would have supported a finding of genericness. More specifically, in Frito-Lay, the parties’ surveys found “either 55% or 41%, respectively, of consumers perceive[ed] the term PRETZEL CRISPS as a brand name. and either 36% or 41%, respectively, perceive[ed] the term [PRETZEL CRISPS] as a common name[.]” The implication is that Mad Dogg would need to obtain survey results that more than 55% of consumers associate “Spinning” with a brand name or less than 36% perceive “Spinning” as a common name. In King-Seeley Thermos Co. v. Aladdin Industries, Inc., “thermos” was found to be generic where a survey was conducted showing that “75% of adults in the United States who were familiar with containers that keep the contents hot or cold, call such a container a ‘thermos’” and “about 12% of the adult American public know that ‘thermos’ has a trade-mark significance, and about 11% use the term ‘vacuum bottle.’” 321 F.2d at 579.
Mad Dogg’s Behavior
Besides dictionaries, articles, and consumer surveys, Peloton may also be able to rely on Mad Dogg’s own use or competitor’s uses of the mark to support its petition for genericism. If a trademark owner uses its mark to refer to the types of goods and services it offers, courts have considered it strong evidence of genericness. See e.g., Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286, 299-300, 57 U.S.P.Q.2d 1174 (S.D.N.Y. 2000) (plaintiff and its predecessors used PILATES to describe a method of exercise and associated equipment). A brief review of Mad Dogg’s website shows that they refer to the sport as “indoor cycling” and their brand as the “Spinning” program. However, it will be interesting to see whether Peloton produces any evidence of Mad Dogg using the term “Spin” or “Spinning” generically to describe a form of exercise.
A key fact for Mad Dogg in this dispute in defending against Peloton’s petitions for genericism will be their ability to rely on their extensive enforcement activities. In King-Seeley Thermos Co., the Court found that the Plaintiff’s enforcement efforts lacked diligence and were too limited in regard to its policing of the public’s use of “thermos.” 321 F.2d at 579. Not so here. Here, Peloton acknowledges Mad Dogg’s extensive enforcement efforts, but argues they cannot “stem the tide.” However, it is clear that Mad Dogg has not abandoned its marks in a way that other trademark owners have, and which would result in dilution of the distinctiveness of the mark. “The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer.” Engineered Mech. Servs., Inc. v. Applied Mech. Tech., Inc., 584 F.Supp. 1149, 223 U.S.P.Q. (BNA) 324 (M.D.La. 1984) (rejecting Defendant’s affirmative defenses of fair use and abandonment of the mark and finding that the mark had not been abandoned and was not generic).
Surveys May Decide the Spin
Finally, if Mad Dogg has been using its marks continuously since the 1990s and has been enforcing its marks, as Peloton’s petitions for cancellation state, it will set a dangerous precedent for the TTAB to cancel Mad Dogg’s marks. Unlike the King-Seely Thermos Co. case, where the court noted that the registrant had not diligently enforced its mark, Mad Dogg has aggressively defended its marks. This case may come down to convincing survey evidence. If Peloton is able to obtain survey evidence that 75% of consumers or more think “Spin” or “Spinning” is a generic term, the TTAB may be hard-pressed to save these marks despite Mad Dogg’s enforcement efforts.
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