When COVID-19 pandemic forced gym closures around the country, Peloton–a company that offers interactive stationary bike home workouts–emerged as a household brand. Peloton’s marketing campaigns often use the term “spinning” to appeal to enthusiasts of traditional spinning classes. However, unfortunately for Peloton, another fitness company–Mad Dogg Athletics–owns an extensive portfolio of federal trademark registrations for SPINNING®. In fact, Mad Dogg Athletics registered its first SPINNING® trademark back in 1993 for “providing training and instruction to others by simulating an outdoor bicycle workout completed indoors on a stationery bicycle.” Unhappy with Peloton taking a lion’s share of the home workout market, Mad Dogg sued Peloton for trademark infringement. In response, Peloton requested the United States Patent and Trademark Office to cancel SPINNING®.
Mad Dogg started using the term “Spinning” for its indoor cycling business back in 1982. In 1993, Mad Dogg made a prudent decision to protect its brand with a federal trademark registration. Since then, Mad Dogg’s SPINNING trademark portfolio grew to forty-four trademark registrations. These trademarks include SPINNING, SPIN, SPIN FITNESS, SPINNING NATIONS, and others. With respect to SPINNING, Mad Dogg owns twelve trademark registrations in various international classes. Some examples of products associated with Mad Dogg’s SPINNING trademarks include cycling classes and equipment, fitness-tracking software, apparel, and so on.
Mad Dogg is known for aggressively policing its trademarks. Indeed, Peloton alleges that Mad Dogg spends hundreds of thousands dollars per year on trademark enforcement. Mad Dogg’s website includes an entire section dedicated to flexing its trademark muscles.
Incontestable trademarks and genericide
The holy grail of any trademark registration is incontestability. Generally, after five years of registration, a trademark registration becomes incontestable. This status is very significant because an incontestable trademark registration is impervious to most invalidity challenges. In this case, that’s bad news for Peloton–Mad Dogg’s SPINNING trademarks date back to 1993 and, therefore, are incontestable. However, every incontestable trademark has an Achilles heel: genericide. If a trademark becomes so widely adopted that it represents an entire product category, rather than a product from a specific company, the trademark becomes a dictionary word and can no longer function as a trademark. Zipper, aspirin, and escalator are textbook examples of trademarks that became generic words. In its petition to cancel, Peloton wants to add spinning to this list.
Who will prevail?
In this case, our money is on Peloton. Maybe in 1980’s and 1990’s SPINNING was a trademark that created a unique commercial impression associated with Mad Dogg. However, over the years, this term has become widely used for indoor cycling classes, in general. At this point, most consumers would probably agree with a journalist quoted in Peloton’s cancellation petition, who wrote:
“Much like other types of workout classes, nobody sees spinning as a source identifier…Nobody thinks of Mad Dogg Athletics. Hell, most people haven’t even heard of MDA…The term spinning is generic. It just is.”
Needless to say this is an interesting case with high stakes for both companies. We will watch closely and provide updates as the case progresses.