The Ninth Circuit recently considered an issue of first impression: What standard of review does an appellate court apply when reviewing a district court’s grant of summary judgment in a trademark infringement case on the equitable basis of the unclean hands doctrine. The Ninth Circuit faced this issue in the case titled: Metal Jeans, Inc.

While Shakespeare may have wondered “what is in a name?”, the executives at Peloton believe that the trademark SPIN is of great importance. Last month (February, 2021), Peloton filed petitions to cancel the trademarks SPIN and SPINNING for physical fitness instruction and for stationary exercise bicycles on the grounds that the marks are generic. Mad Dogg Athletics, located in Venice, CA, is the owner of the trademarks SPIN and SPINNING. Mad Dogg registered SPIN on the principal register in 1998 and SPINNING in 1993. In its petition, Peloton asserted that Spin classes and spin bikes are part of the fitness lexicon and that Mad Dogg’s trademarks for SPIN and SPINNING have become generic. Peloton cited to Internet evidence, including memes, to support its argument that the terms SPIN and SPINNING have become generic.

It is a serious issue for a trademark owner if their trademark becomes generic.  Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. Put in common parlance, if the general public primarily understands the word to designate the product rather than the producer, the word is generic. Generic terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Supplemental Register or on the Principal Register after having acquired secondary meaning.

There is a two-part test used to determine whether a designation is generic: (1) What is the class of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? The test turns upon the primary significance that the term would have to the relevant public.
Continue Reading SPIN Trademark Has Peloton Wrapped Around the Axel

©2021. Published in Landslide, Vol. 13, No. 3, January/February 2021, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The U.S. Supreme Court issued numerous landmark decisions in 2020, among those—for trademark scholars and practitioners—Romag Fasteners, Inc. v. Fossil, Inc.1 The Court, with Justice Gorsuch delivering the majority opinion, held that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award. But Justice Gorsuch’s opinion and Justice Alito’s and Justice Sotomayor’s concurrences were clear that mental state is still a highly important consideration in determining whether to award profits. To that end, even with the Romag decision clarifying that willfulness is not a precondition for a profits award in a trademark infringement suit, the lower courts are likely to still require plaintiffs to prove that defendants had high levels of culpability before awarding profits for trademark infringement. Practitioners should expect that juries will find that defendants who knew of infringement or were reckless concerning the possibility of such conduct deserve to lose their profits.

Romag solidifies the threat posed to companies that rely on third-party manufacturers. By allowing a profits award when infringement is perpetrated with a mental state less than willfulness, this decision incentivizes companies using Chinese and other foreign manufacturers to innovate in order to mitigate these risks, either by strengthening supply chain oversight or (more likely) by writing contracts to control the risk as much as possible. Considering the importance of Chinese manufacturing to global trade, the Chinese legal system and its evolving trademark enforcement system will likely cause companies to get creative.
Continue Reading Meeting of the Minds: The Price of Recklessness: Disgorgement of Profits in a Post-Romag World

Join Josh Escovedo and Jessica Corpuz in this one-hour webinar about Intellectual Property Law and will specifically address The Consolidated Appropriations Act of 2021.

Program Summary:
The Consolidated Appropriations Act of 2021—arising from the December 2020 stimulus bill—made significant changes to intellectual property law, unbeknownst to many practitioners. This webinar will focus on the changes