Peloton Petitions to Cancel Mad Dogg Athletics’ Trademark of “Spin” and “Spinning”

As gyms around the country have closed due to the COVID-19 pandemic, Peloton, a popular gym equipment manufacturer, has seen a huge growth in sales.¹ By May 2020, the company reported a 66% increase in sales,² and their global membership base hit 3.1 million by the end of June.³ Despite their success, Peloton has faced numerous legal battles over the past year,⁴ one of which is a trademark claim they recently filed against Mad Dogg Athletics.⁵

In February 2021, Peloton filed a petition to cancel Mad Dogg Athletics’ trademark registration of the words “spin” and “spinning,” arguing that the term has become generic and entered into common usage.⁶  A term is generic when “the relevant purchasing public understands [the term] primarily as the common or class name for the goods or services.”⁷ There is a two-part test used to determine whether a term has become generic.⁸ The first prong of the test asks “what is the genus of goods or services at issue?”⁹ The second part asks “does the relevant public understand the designation primarily to refer to that genus of goods or services?”¹⁰ The test is based on the primary significance of the mark to the public.¹¹

Peloton states that they are damaged by the trademark registration of the words “spin” and “spinning.”¹² The company argues that they should be “free to use the term to discuss, market and sell its spin products and services.”¹³ In their petition, Peloton writes that “even five minutes of simple Google searching reveals that everyone in the world…understands that ‘spin’ and ‘spinning’ are generic terms to describe a type of exercise bike and associated in-studio class.”¹⁴

On the other hand, Mad Dogg Athletics, who filed a lawsuit against Peloton in December 2020 for patent infringement,¹⁵ says that Peloton’s claims are meritless.¹⁶ Mad Dogg Athletics argues that loss of their trademark would “den[y] consumers the opportunity to identify an original, quality product developed with years of experience for repeat satisfactory purchases.”¹⁷ Because Mad Dogg Athletics has been continuously using the rights to their trademarks in “spin” and “spinning” for over twenty-five years, the company says it is “confident that Peloton’s legal action will fail.”¹⁸

Peloton asks the court to cancel Mad Dogg Athletics’ trademark pursuant to 15 U.S.C § 1064(3).¹⁹  This statute provides that a person can petition to cancel the registration of a mark “at any time if the registered mark becomes the generic name for goods or services…for which it is registered, or is functional….”²⁰ If, in the public’s eye, a mark becomes identified with a type of product or service, rather than a particular brand, then the mark has become generic.²¹

In 2000, the United States District Court in Manhattan reviewed a similar case regarding the trademark of the name “Pilates.”²² The court ruled that “like yoga and karate, Pilates²³ is a type of exercise…[and] the generic name for a method of exercise…cannot operate as a trademark.”²⁴ At trial, the court looked to evidence that the name “Pilates” was generic, such as a dictionary definition that Pilates was a method of exercise, articles in which Pilates was described as an exercise, not a brand.²⁵

In the current case relating to “spin” and “spinning,” Peloton has submitted similar pieces of evidence to prove that the words are generic. One example is Urban Dictionary’s definition of “spin class,” which is “a group exercise in which participants ride stationary…bicycles….”²⁶ Furthermore, Peloton states that in a Google search, one could find many articles that have been written over the years about the popular workout, generically calling it “spinning” without specifically referring to Mad Dogg Athletics’ workout.²⁷

“Peloton is being damaged, and will continue to be damaged, by the continued registration of this trademark on the Principal Register,” Peloton stated in their petition.²⁸ The fitness brand wishes to be able to use the terms “spin” and “spinning” without being constrained by Mad Dogg Athletics’ threats from doing so.²⁹

Brooke Banks is a Second Year Law Student at the Benjamin N. Cardozo School of Law and a
Staff Editor at the Cardozo Arts and Entertainment Law Journal. Brooke is interested in
intellectual property, entertainment, and real estate law.

1. Mary Hanbury, Peloton reports 66% increase in sales as coronavirus keeps consumers working out at home, Business Insider (May 7, 2020, 9:26 AM) https://www.businessinsider.com/peloton-sales-surge-coronavirus-keeps-consumers-working-out-at-home-2020-5.
2. Id.
3. Peloton sales surge as virus boosts home workouts, BBC News (Sept. 10, 2020) https://www.bbc.com/news/business-54112461.
4. Todd Spangler, Peloton Settles Legal Fight With Music Publishers, Variety (Feb. 27, 2020, 6:46 AM) https://variety.com/2020/digital/news/peloton-settles-music-publishers-lawsuit-1203517495/; Mark Gurman, NordicTrack maker sues Peloton over new exercise bike design, Fortune (Oct. 15, 2020, 10:39 AM), https://fortune.com/2020/10/15/peloton-bikes-nordictrack-lawsuit-patent-infringement/; Michelle Arthurs-Brennan, Owners of Spinning to sue Peloton for alleged patent infringement, Cycling Weekly (Dec. 17, 2020, 11:45 AM), https://www.cyclingweekly.com/news/product-news/owners-of-spinning-to-sue-peloton-for-alleged-patent-infringement-486598.
5. Peloton Interactive, Inc. v. Mad Dogg Athletics, Inc., No. 92076463, United States Patent and Trademark Office (Feb. 16, 2021), https://ttabvue.uspto.gov/ttabvue/v?pno=92076463&pty=CAN&eno=1.
6. Jon Porter, ‘Spinning’ is trademarked, and Peloton isn’t happy about it, The Verge (Feb. 18, 2021, 7:01 AM), https://www.theverge.com/2021/2/18/22289005/peloton-spinning-spin-trademark-mad-dogg-dispute-appeal.
7. TMEP § 1209.01(c).
8. TMEP § 1209.01(c)(i).
9. Id.
10. Id.
11. Id.
12. Peloton Interactive, No. 92076463 at *1, *11.
13. Id.
14. Id. at *6.
15. Michelle Arthurs-Brennan, Owners of Spinning to sue Peloton for alleged patent infringement, Cycling Weekly (Dec. 17, 2020, 11:45 AM), https://www.cyclingweekly.com/news/product-news/owners-of-spinning-to-sue-peloton-for-alleged-patent-infringement-486598.
16. Rob Lenihan, Peloton Spin-Trademark Argument Meritless, Mad Dogg Athletics Says, The Street (Feb. 23, 2021, 2:40 PM), https://www.thestreet.com/investing/peloton-spin-trademark-fight-meritless-mad-dogg-says.
17. Jon Porter, ‘Spinning’ is trademarked, and Peloton isn’t happy about it, The Verge (Feb. 18, 2021, 7:01 AM), https://www.theverge.com/2021/2/18/22289005/peloton-spinning-spin-trademark-mad-dogg-dispute-appeal.
18. Lenihan, supra note 16.
19. Peloton Interactive, No. 92076463 at *6.
20. 15 U.S.C. § 1064(c).
21. Generic Terms, Justia (Apr. 2018), https://www.justia.com/intellectual-property/trademarks/strength-of-marks/generic-terms/#:~:text=A%20trademark%20can%20become%20%E2%80%9Cgenericized,to%20refer%20to%20these%20products.
22. Anastasios G. Garbis, Is “Spinning” Trademark Generic?, Garbis Law (Feb, 20, 2021), https://www.garbislaw.com/is-spinning-trademark-generic.
23. See Laurel Leicht, Everything You Need To Know About Pilates Before Your First Class, Women’s Health (July 28, 2019), https://www.womenshealthmag.com/fitness/a28482911/what-is-pilates-good-for/ (Pilates, unlike yoga and karate, is capitalized in writing because Pilates is named after its founder/creator, Joseph Pilates).
24. Id.
25. Lawrence Stanley, Court overturns Pilates Trademarks, Balanced Body. https://www.pilates.com/pilates/origins/trademark-lawsuit/.
26. Peloton Interactive, No. 92076463 at *6; See Spin Class, Urban Dictionary, https://www.urbandictionary.com/define.php?term=Spin%20class (last visited, Feb. 26, 2021).
27. Peloton Interactive, No. 92076463 at *6-7 (In February 2017, the Wall Street Journal published an article called “I Hate Spinning. Then I Spun;” in March 2014, the New York Times wrote an article called “Welcome to Spin Class: You Won’t Last”).
28. Peloton Interactive, No. 92076463 at *11.
29. Id.