Portugal: Trademarks That Become Generic

Last Updated: 2 August 2018
Article by Miguel Bibe

Is the CrossFit trademark "too big"?

This new dynamic that revolutionized indoor physical training, created in 2000 by Greg Glassman, consists in a physical training methodology focused on the development of general physical skills, from a dynamic and functional training. Through this new method, practitioners through WOD'S (work of the day) constantly challenge their physical and mental endurance.

Observing the exponential growth, according to the number of affiliates, it is possible to notice that CrossFit is increasing the number of practitioners, with thousands of affiliates spread all over the continents.

However, it is not so well-known that the name of this training method is registered as a trademark practically all over the world, in which, if a possible interested party intends to open a public space and use the designation "CrossFit" in order to attract customers that seek to train according to this philosophy, is subject to a license granting by the "CrossFit" trademark owners, in which one of the conditions is an annual payment of a quote corresponding to 3,000 USD.

Looking at the growing number of affiliates, it is possible to conclude that the "CrossFit" trademark has become a well-known trademark, with a worldwide reputation. However, in parallel with the continuing trademark license globalization,  the globalization of several BOXS (a term adopted by the CROSSFIT practice spaces) that usethe CrossFit trademark name and which adopted this train philosophy without asking permission or paying the license to the CrossFit trademark owners arised.

While no specific litigation situation has yet emerged, it should be examined whether an interested third party may use the designation "CrossFit" to identify goods or services related with physical training without the permission and the license of the "CrossFit" trademark owners.

In light of the above, arises the question of trademarks that become generic, meaning that trademarks whose associated goods or services reach a level of notoriety so high that in common language these goods or services begin to be designated by the trademark name, lose its distinctiveness (essential requirement for trademark protection),become generic and, consequently, lose the exclusivity ownership and fall into the public domain.

Although the "genericity" examination (process of a trademark becoming generic) has to be taken with due caution and at territorial level, there are numerous cases where perfectly distinctive trademarks have become generic. An example is Bayer's "ASPIRIN" trademark for "synthetic acetylsalicylic acid", which was declared generic in the USA, or the trademark "COTONETE" from Johnson & Johnson's for " flexible rods with cotton at both ends to clean ears", or the trademark "GILETE" from Gillette for "T-shaped razor blades and/or shavers", or trademark "LYCRA" from Invista to "polyamide textiles", or yet thetrademark "XEROX" from Xerox to "photocopiers" in Brazil and USA.

However, the most similar cases, as they are also related to physical activity, are the "PING PONG" and "PILATES" trademarks. If in the case of the PING PONG trademark doubts may arise since the technical name used in official competitions of the activity is TABLE TENNIS, in the case of PILATES trademark there is no room for doubt.

This famous training method was invented by Joseph Pilates and registered as a trademark. However, the trademark began to be used to describe this physical activity, becoming part of the common vocabulary. The PILATES trademark was deemed generic by a federal court in the District of New York in 2000 because everyone associated "PILATES" with that form of exercise in general, which means that, currently, no one has the legitimacy to exclusively appropriate the term PILATES and anyone who wishes to insert this term in the protection of their trademark will have to add an element with sufficient distinctiveness.

There are some measures to be taken by trademark owners to prevent them from becoming generic. An example of this would be  avoiding the use of the trademark name as a verb or a noun, for example the daily use of phrases such as "let's do CrossFit", or adopt a strict protocol for the use of the trademark, such as a specific type, color combination, even positioning the trademark name in a certain position or any other specification that guarantees a specific and correct use of the trademark, as well as always following the trademark name by the symbol ® identifying it as a registered trademark.

Another key strategy will be to adopt a policy of not allowing third-parties to use the trademark name in order to avoid widespread use and  become a describing name.

With the licensing policy adopted by the "CrossFit" trademark owners, which began to be used worldwide by thousands of people in which any of these affiliates have the possibility to proceed with a personally trademark name stylization, may lead to an inevitable vulgarization of the CrossFit trademark name.

In addition, the growing number of public spaces where this designation is used and disseminated to attract interested practitioners without the respective authorization of the trademark owners, and apparently without legal consequences, confirms that this trademark, previously totally distinctive, is following the path of "genericity".

However, it will be very interesting to see, in a hypothetic future case of litigation, what arguments will be used by the CrossFit trademark owners to defend the distinctive ability and non-generalization of the trademark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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