Written By: Natalie Purcell
Peloton has become a household name by providing home fitness services during the Covid-19 pandemic. While sheltering in place throughout the pandemic, people were panic buying toilet paper, meat, baking supplies, and a $2245 Peloton exercise bike.[1] With sales soaring, reportedly topping $1 billion in their second-quarter earnings, Peloton’s success has been both sweet and sour.[2] The increase in demand has resulted in production and delivery delays as well as an onslaught of lawsuits involving civil class actions, strict liability, trademark, and patent infringement claims.[3]
With Peloton being on the defense for much of the legal action brought against them in 2020, it recently switched gears, filing a petition with the United States Patent and Trademark Office’s (“PTO”) Trademark Trial and Appeal Board against rival fitness company Mad Dogg Athletics.[4] In an attempt to cancel Mad Dog’s “Spinning” trademark, Peloton is claiming the competitor is abusively enforcing the generic use of the mark.[5] The petition alleges that Mad Dog is improperly protecting the mark to insulate an unfair monopoly over a word that had become a common term for indoor cycling.[6]
Peloton’s appeal is a glimpse into what could turn out to be a high-profile showdown of the controversial intellectual property theory of “genericide.”[7] Genericide is “the idea that a prominent brand name has become such a fixture in the market that consumers start to use it for any company’s goods or services.”[8] Proving that a brand has surrendered to genericide is an uphill climb and no easy feat.[9] Marks such as aspirin, elevator, and thermos slipped into the public domain decades ago.[10] However, there are many words that are often used generically by consumers that have managed to hang on to their protected status including Kleenex, Band-Aid, and Xerox.[11]
Mad Dog Athletics has successfully held onto its marks for “Spin” and “Spinning” for its indoor stationary bikes and cycling classes since the 1990’s, but now faces the reality that what was unique twenty years ago may have fallen into the common vernacular.[12] Mad Dog Fitness has sent countless cease and desist letters to small and big players alike for the use of its marks, and Peloton has had enough.[13]
Clip in and stay tuned, Mad Dog Fitness may have ridden into a hornet’s nest with deep pockets and the stamina to outride the competition.
[1] Erin Griffith, People Are Panic-Buying Meat, Toilet Paper … and Pelotons?, N.Y. Times (May 6, 2020), https://www.nytimes.com/2020/05/06/technology/peloton-boom-workout-virus.html [https://perma.cc/W598-4C7D].
[2] Yun Li & Thomas Franck, S&P 500 Falls Slightly on Friday to End a Losing Week, CNBC (Feb. 19, 2021, 4:00 PM) https://www.cnbc.com/2021/02/04/peloton-pton-reports-q2-2021-earnings.html [https://perma.cc/2W5M-K7VJ].
[3] Gonzalo E. Mon, Peloton Faces Uphill Ride on “Ever-Growing” Claims, Kelley Drye (Nov. 19, 2020), https://www.adlawaccess.com/2020/11/articles/peloton-faces-uphill-ride-on-every-growing-claims/ [ https://perma.cc/73XL-FEBU]; Alex Baldwin, Peloton Launches Legal Battle over ‘Spinning’ Trademark, World Intell. Prop. Rev. (2021), https://www.worldipreview.com/news/peloton-launches-legal-battle-over-spinning-trademark-21054 [https://perma.cc/4TAP-K84T]; and Bill Donahue, Is ‘Spinning’ Generic? Peloton is Willing to Pay to Find Out, Law 360 (Feb. 17, 2021, 8:13 PM), https://www.law360.com/articles/1319959/nordictrack-maker-says-peloton-s-new-bike-infringes-ip [https://perma.cc/4MH8-A66W].
[4] Alex Baldwin, supra note 3.
[5] Id.
[6] Bill Donahue, supra note 3.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12]Id.
[13] Id.
