Peloton Interactive, Inc. (“Peloton Interactive”) manufactures and sells exercise equipment, such as stationary bicycles and treadmills, for home use under the mark PELOTON®. The equipment features streaming video fitness classes. Members participate in the classes to produce an interactive community experience in the comfort of their own home. This enables the user to work out at home but still feel like they are in a “class” environment. They also offer fitness apps and streaming exercise and fitness classes as well as a variety of goods. Such goods range from water bottles to athletic clothing. The company owns several trademark registrations for the mark PELOTON® in various classes to cover their diverse goods and services. Peloton Interactive does not have a trademark registration for any goods in class 30. Class 30 includes coffees, teas, and other food and beverage items.
Peloton Cold Brew, LLC (“Peloton Cold Brew”) is a company selling cold brew coffee as well as teas. They obtained a federal trademark registration in 2018 for PELOTON® for “beverages made of coffee” in class 30. Recently, Peloton Interactive filed a cancellation proceeding to cancel the mark on the grounds of likelihood of confusion and abandonment.
Likelihood of Confusion
Peloton Interactive argues that the marks are identical in sound, appearance and meaning. They assert their flagship store in New York contains a café which sells coffee, tea, and other assorted foods and beverages. Additionally, they argue that they offer commentary on food and nutrition on its blog and social media accounts. As such, Peloton Interactive alleges a similarity in the goods and services. Such similarity can cause consumers to believe the goods originate from or are endorsed by Peloton Interactive.
While the marks are identical in sound, appearance and meaning, there may not be a sufficient connection between the good and services offered by Peloton Interactive and the coffee beverages offered by Peloton Cold Brew. The presence of a café in the flagship store selling coffee and other food items, may not be sufficient to show a consumer would be confused as to the origin of coffee they bought elsewhere under the name PELOTON. Any instances of actual confusion between the marks strengthen the case. Similarly, the well-known nature of the mark for Peloton Interactive’s goods and services is a factor supporting their likelihood of confusion case.
Abandonment by Peloton Cold Brew
With regard to abandonment, Peloton Interactive alleges that Peloton Cold Brew is no longer selling coffee beverages and has no intent to resume use. Peloton Cold Brew has not yet responded to the cancellation petition.
With regard to abandonment, one must show nonuse of the mark as well as an intent not to resume use. It is very difficult to prove abandonment of a mark. Even minimal use of a mark can be enough to refute a claim of abandonment.
Similarly, a break in use is permitted as long as there is an intent to resume use in the future. It is generally difficult to prove there is no intent to resume use, assuming there is not use currently. Peloton Cold Brew has launched a new tea beverage using the mark PELOTON. The sale of this tea beverage may be sufficient to show use of the trademark even though the recitation does not specifically list teas. The same international class also contains teas. One could find it reasonable that a company selling coffee would also sell teas. In conclusion, abandonment will likely be difficult to prove if Peloton Cold Brew can at least establish a bona fide intent to resume use.