What do terms like “TV dinner,” “teleprompter,” and “trampoline” have in common? Sure, they all begin with the letter “t” but, in particular, what do these words identify? These terms identify goods that are not from any specific source, each representing a general class of goods. TV dinner is any ready-made frozen meal that comes portioned for an individual; a teleprompter is any display device that prompts the person speaking with a visual script; a trampoline is any equipment with a strong fabric sheet connected by springs to a frame. Specifically, what these terms do share is that they were once protected trademarks but have become victims of trademark genericization.
A trademark identifies goods (or services) as being from a specific source. Under US trademark laws, a generic term can never become a trademark. As such, when public usage of a registered mark associated with specific goods or services transforms it into a common name for those goods or services, the mark can no longer denote a source, which would allow for cancellation of the trademark registration. When the trademark registration is cancelled from the trademark registers, all previously afforded trademark rights are lost.
So, which terms are next in potentially becoming genericized? Apparently, the terms “spinning” and “spin” are next. The registered marks “SPINNING,” “SPIN,” “SPIN FITNESS,” and “SPIN PILATES”  have been owned by Mad Dogg Athletics, Inc. (Mad Dogg), located in Venice, California, before indoor cycling became popular. Some of these registered marks are associated with rather specific goods or services that are at least not limited to indoor biking classes at all, such as “SPINNING” with “prerecorded video cassettes featuring exercise and general physical fitness instruction,” “providing facilities for recreation, physical fitness, exercising activities, fitness instruction, and fitness consultation,” and “providing information in the field of exercise and fitness via the Internet,” and “SPIN” with “physical fitness instruction”. However, Mad Dogg now face challenges to the validity of these registrations on the basis of genericide.
On February 16, 2021, Peloton Interactive, Inc. (Peloton) filed numerous petitions with the Trademark Trial and Appeal Board (TTAB) of the United Patent and Trademark Office (USPTO) to cancel Mad Dogg’s trademark registrations, alleging that the terms “spin” and “spinning” have become generic terms that describe a type of exercising bikes and are associated with in-studio biking classes. Peloton cited to Internet evidence to support its arguments that these terms are part of the fitness lexicon, despite Mad Dogg’s defense that it has been actively enforcing its trademark rights and policing its trademark use for more than 20 years.
Even with ongoing efforts to enforce proper trademark use, marks can become generic as the use of language evolves and public perception changes. As another example, previously trademarked, the term “cellophane” became part of the public domain through consumers’ indiscriminate use of the mark, in spite of Dupont Cellophane Co.’s efforts to police the use of the mark.
When determining whether a mark has become part of the public domain, the public perception of the mark most likely more important than its trademark owner’s enforcement and policing efforts. In a 2020 decision, the United States Supreme Court reiterated that eligibility for registration turns on a registered mark’s capability to distinguish goods in commerce, and the primary significance of the mark to the relevant public is the test for determining whether the registered mark has become the generic term for goods to the public.
While public perception of a mark may lead to a mark being genericized, public perception of the mark may eventually evolve back, making it possible to reverse genericide. For example, in 1896, the U.S. Supreme Court found that the term “Singer” was known to the public as representing a general class of sewing machines. More than 55 years after the Court’s decision, in 1953, Singer Manufacturing Co. was able to recapture the term “Singer” from the public domain after successfully demonstrating that the public’s perception of the term had change since the 1896 decision. While reversing genericide is possible, it involves extraordinary amounts of resources, including time, effort, and money.
Public perception of a term does not occur overnight but is formed over years of continuous usage. Trademark owners thus need to be active in fighting against genericide. The flight might include pushing back on misuse via cease-and-desist letters or lawsuits. The fight might also include educating the public that their marks denote a source of goods or services and not a category of goods or services, such as advertisements via direct mailings or public displays or events. Trademark owners also need to enforce rules of proper trademark use that help differentiate their trademarks from generic names for goods. For example, a trademark should never be used as a noun by itself as this is how genericide happens. Instead, a trademark should be used as an adjective (e.g., used in conjunction with a generic name to clearly distinguish the brand name from a category of goods or services). For another example, the ™ symbol should be used with unregistered trademarks, and the ® symbol should be used with registered trademarks.
Unlike other trademark owners who failed to police the use of their registered marks and lost their trademark rights as a result, Mad Dogg maintains a dedicated webpage that explains how its trademarks should be used and exercises other means to preserve their marks’ branding functionality. Mad Dogg’s enforcement and policing efforts are likely to be an important argument in its upcoming defense against Peloton. Whether these efforts are enough to tip the scale in favor of finding no genericide is yet to be seen. Mad Dogg has had recent success in protecting their trademark rights in foreign jurisdictions, though. For example, in 2018, the European General Court ruled that it was important to identify who the relevant “public” was in considering public perception, and no evidence was presented on how many of Mad Dogg’s customers, such as gym operators and rehabilitation facilities, perceived the term “spinning” in relation to “exercise equipment.”
It will be interesting to see what arguments will be spun by Mad Dogg and Peloton before TTAB, especially when many of the marks in dispute can hardly be considered as a generic name for the associated goods or services. For example, it is most likely unheard of that the term “spinning” is used to represent prerecorded video cassettes. Nonetheless, the TTAB will provide a decision, not to whether Mad Dogg can continue using the marks at issue, but to whether others can freely use them as well.
We are ready to help you with a strategic approach to protect and enforce your trademarks. If you have additional questions or require assistance with your intellectual property matters, please do not hesitate to contact our office.
 US Registration Nos. 1780650, 2003922, 2424295, 3286726
 US Registration No. 2173202
 US Registration No. 3521332
 US Registration No. 3528187
 Proceeding Nos. 92076463 (for 2424295 “spinning”), 92076471 (for 1780650 “spinning”), 92076499 (for 2003922 “spinning”), 92076554 (for 3286726 “spinning”), 92076483 (for 2173202 “spin”), 92076516 (for 3521332 “spin fitness”), 92076469 (for 3528187 “spin pilates”)
 See Patent and Trademark Office v. Booking.com B. V., 140 S. Ct. 2298, 207 L. Ed. 2d 738 (2020).
 Previously, it was generally discouraged to use trademarks as a noun or a verb. However, in 2017, the Ninth Circuit decided that use of a mark as a verb did not automatically render the mark generic. See Elliott v. Google, Inc., 2017 WL 2112311 (9th Cir. May 16, 2017).
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