When is the common name for a method of doing something a term that can be trademarked? Rappelling? Imagine that with a little circled R or an itty-bitty TM after it. Spinning? That's of course already got the registered mark as an indoor cycling program by Schwinn and Mad Dogg Athletics, but what cyclist doesn't know spinning as a way to get into shape by pedaling at a higher RPM than normal during early-season conditioning? Is it really a generic term?
This fall, an ongoing and hotly debated trademark dispute in the fitness world came to a close when Manhattan's federal district court ruled against an attempt to claim ownership of the trademark to the term "Pilates." U.S. District Court Judge Miriam Cedarbaum ruled that Pilates, like yoga or karate, is a method of exercise and, as such, was a generic term that could not be a registered trademarked nor could it therefore be infringed upon.
Plaintiff Sean Gallagher of The Pilates Studio in New York City and president of Pilates Inc., said in a statement just days after the ruling that he planned to appeal the decision. "Consumers lost out last week when the court ruled that the word ‘Pilates' is generic for exercise instruction and equipment," Gallagher said in a statement.
Not everyone agreed. A web site (www.pilates-cancel.com) was flooded with mostly enthusiastic responses in favor of the ruling. Granted, the web site was put up by the defendant, Ken Endelman, of Balanced Body, the maker of Pilates equipment in Sacramento, Calif. But all responses, pro and con, have been posted unedited. "The words adopted by the public to describe a method of exercise cannot be protected by a trademark," says Gordon Troy, attorney for defendant Endelman.
For decades, Pilates has been a method of exercise since it was first developed by German immigrant Joseph H. Pilates and brought to the United States in the 1920s. It wasn't until the 1990s that it began to gain popularity outside of its world of dancers and performing artists. Using low-tech but effective sliding platforms, tables, chairs, springs for resistance, loops, and metal bands all invented by Mr. Pilates, its reputation for great conditioning of the torso, back and abdominals is not just myth. The mental focus and full breathing it demands from participants also gained it a moniker as a mind-body fitness method.
One outcome of the ruling seems to have all sides in agreement: The public will have to be fully aware of what it is getting with a class or other instruction called Pilates since anyone can now use the term. "With the recent legal decision, it is quite likely that many more individuals and organizations will use the term ‘pilates' to capitalize on the pilates media hype in order to sell themselves," says Moira Stott, director of education for Toronto, Canada-based Stott Pilates, an instructor-certifying group and equipment manufacturer. "It will be much more important that consumers educate themselves about the different approaches to pilates."
SNEWS View: It takes someone to challenge a trademark to cancel it. Endelman did that, and won. Without a real way to describe this method of exercise other than by the creator's name, the public will now know what it's getting and won't be forced to interpret some convoluted class name (Body Lines? Centered Strength?) that's trying to say it's Pilates … without using "The P-Word," as those in the industry took to calling it.
This kind of controversy isn't relegated to the fitness world. It just so happens that someone (plaintiff Gallagher, in this case) sent out hundreds and hundreds of cease-and-desist letters, causing an industry furor. As an example in the outdoor industry, Marmot owns the trademark to "PitZip" and proudly adds a TM after its use, says John Cooley, Marmot's spokesman. But, he adds, the company has never defended its use by others, meaning that the term would probably be considered generic by the court if it came to blows.
Marmot took the high road with this term, one that Gallagher could have done with Pilates, which may have gained him more friends and even earned him more money. "We have always found it better to work within our community than sue," Cooley says. "To sue over someone using ‘PitZip'… does not further our interests as a business, as a brand, or as a member of the larger outdoor industry community…. It is our job to continually grow, change, and innovate, not to defend the past."