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Popular Brands Work to Keep Trademarks as Peloton Strikes at One

Feb. 26, 2021, 10:56 AM

Owners want their brand everywhere, but Peloton Interactive Inc.'s bid to cancel “spinning” trademarks reminds companies they must manage threats of a certain kind of pervasiveness—a mark that ends up defining a product, not its producer.

Peloton has petitioned to cancel Mad Dogg Athletic’s “spin,” “spinning,” and “spin fitness” trademarks. It argued consumers see the terms as meaning stationary bikes and their use, not a brand.

If the Trademark Trial and Appeal Board agrees, it would push Mad Dogg into a club of ex-protected brands like trampoline, escalator, and zipper. All outgrew reference to a single company. That outcome is known as genericide.

Companies have a number of tools, both in brand development and management, to help names retain the function of trademarks—to indicate the source of a product.

But trademark law ultimately comes down to the evolution of language and perceptions not entirely within a company’s control. That makes it difficult for some marks to avoid the fate of dry ice, thermos, and cellophane.

“Trademark law is all about the significance of a term to consumers,” trademark attorney Peter Sloane of Leason Ellis LLP said. “I’m a consumer. I have a Peloton bike. I think of it as a spin bike, and I’ve never heard of Mad Dogg.”

Companies have tried various approaches to avoid loss of trademarks. Velcro attorneys pleaded with consumers in a pair of viral music videos a few years ago not to misuse the brand name. So far Velcro’s trademarks remain. Jacuzzi, Kleenex and Xerox also have managed to hold on to at-risk registrations.

While “spin” may be endangered, use of newer brands like Google and Zoom as a verb in a seemingly generic context also raises the question of when exactly a term crosses over.

Public use in such contexts isn’t fatal. Such dominance can come with public understanding that the term is also a brand, as Google convinced the U.S. Court of Appeals for the Ninth Circuit in 2017.

There’s no formula or “magic number” for what share of consumers need to recognize an oft-used mark as a brand, trademark attorney Will Delgado of DTO Law said.

“It’s more art than science,” Delgado said. “When you say the mark, does the public believe that you are referring to the good itself, rather than the source?”

Spinning a Defense

In its Feb. 16 petitions, Peloton claimed Mad Dogg for years had been sending Peloton and others “baseless cease-and-desist letters” threatening expensive litigation if they continued using “spin” or “spinning.” Mad Dogg acquired its first spin trademark in 1996.

Mad Dogg said in a statement that it’s “confident Peloton’s legal action will fail,” calling it “legal retaliation” for its patent suit against Peloton. It said it has been continuously using, licensing, and enforcing its trademark rights for more than 25 years.

Attorneys point to the 1921 New York federal court decision ruling on Aspirin as the seminal genericide decision.

The court ruled against a branch of Sterling Drug—which bought German drug company Bayer’s U.S. assets confiscated during World War I, selling them back in 1994—because Aspirin was the only name for the drug consumers knew.

“That 100-year-old case really set the modern standard,” trademark attorney Brooke Erdos Singer of Davis & Gilbert LLP said. She added that analyses vary widely because cases are “so fact-specific.”

Evidence in genericide ranges from usage of the word by media outlets, consumer surveys, expert witnesses, and even the dictionary. Cases don’t often reach decisions because surveys and experts make litigation expensive, and few marks become so broadly used.

Preserving a Mark

Proper use of trademarks in ad campaigns and on packaging can help preserve a mark’s functionality, attorneys said.

Offering a different generic term for a novel product can occupy the trademark’s generic function, some attorneys said. Johnson & Johnson harnesses both by using “Band-Aid Brand Adhesive Bandages” on packaging to delineate its century-old Band-Aid trademark from the product.

“If from the outset Mad Dogg had used Spin, and come up with a generic term for either the bike or classes, it may have had a chance,” Sloane said. “But even after all that, and using the best practices, it’s up to consumers to decide whether a term is generic or not.”

‘Strong and Heavy’

The task becomes difficult when company like Velcro dominates the market at the time its patented invention is new, and the brand slides into becoming synonymous with the product. As with Spin, Velcro is much easier to say than any other widely used generic term.

No one ever really associated “Spin” with a brand, while companies successfully framed Jacuzzi, Kleenex and Xerox as brands in at least some consumers’ minds, trademark attorney Dyan Finguerra-DuCharme of Pryor Cashman LLP said.

“You just need to go strong and heavy from inception, and continue that pressure,” Finguerra-DuCharme said.

Finguerra-DuCharme recalled her team “going all out” for then-client Pfizer Inc. to prevent Viagra from becoming generic. That involved 28 lawsuits, many cease-and-desist letters, and even informative letters to news organizations that used it in a generic manner for erectile dysfunction medicine, she said.

Perceptions evolve, so reversing genericide is possible, if difficult. The Supreme Court declared Singer generic for sewing machines in 1896 before Singer Corp. successfully revived it in the 1950s. Best Buy had once been deemed generic as well before the electronics retail giant made it famous.

“Who knows? Within 50 years it may be a protectable mark,” trademark attorney Hope Hamilton of Holland & Hart LLP said. “What’s perceived as being generic today may not be 10 years from now.”

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Renee Schoof at rschoof@bloombergindustry.com; Keith Perine at kperine@bloomberglaw.com

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