Interview: How the CROSSFIT Trademark Avoids Genericide Rodrigo V. Bermeo-Andrade, Bermeo & Bermeo Law Firm, Quito, Ecuador
INTA Bulletins—Latin America and Caribbean Subcommittee.
Federico Berger, Buenos Aires, Argentina Famous and Well-Known Marks—Latin America and Caribbean Subcommittee.
INTA’s Famous and Well-Known Marks—Latin America and Caribbean Subcommittee (FWKM, Latam SC) researches and advises on how famous marks can maintain their distinctiveness and avoid so-called genericide. Genericide occurs when a product or service is new in a particular market and the brand name, by default, becomes the generic term of reference for the product or service by the general public.
The FWKM, Latam SC, in February 2018, organized a dynamic and successful workshop in Bogotá, Colombia, to discuss this topic. As a follow-up to that workshop, the Subcommittee also reached out to Marshall Brenner, General Counsel at CrossFit, Inc. (USA), Lindsay Gonzalez, Counsel at CrossFit, Inc. (USA), and the company’s outside counsel, Zachary Eyster (Greenberg Traurig, USA) to learn more about the experience of this successful company in protecting the value of its famous mark, CROSSFIT—particularly with respect to avoiding genericide.
How important is the CROSSFIT trademark to the company’s brand?
The CROSSFIT mark symbolizes our values of fitness, nutrition, innovation, competitiveness, community, and social action. Because there are so many instructors teaching “functional fitness”—fitness designed to prepare you for the expected and unexpected physical demands of daily life—the CROSSFIT brand distinguishes our health-and-fitness-focused lifestyle, culture, and values from our competitors. The CROSSFIT trademark is the most valuable asset of our company because it is so well-recognized. When consumers see the CROSSFIT mark, they know the goods and services offered under it will be of the highest quality; they know the goods and services will be rigorously tested for safety and effectiveness; and they know the information connected with the CROSSFIT mark will be assiduously researched, well-sourced, and reflective of the state of the art for proper training, health, and fitness.
In how many countries is the CROSSFIT mark registered and in how many is it being licensed?
The CROSSFIT mark is registered in more than 140 countries and enjoys worldwide recognition. CrossFit, Inc. has licensed affiliates in 152 countries and provides its crossfit.com Workout of the Day, CrossFit Journal website, and CrossFit Games Open worldwide. CrossFit also offers direct-to-consumer and licensed CrossFit-branded goods like instructional posters, clothing, shoes, and exercise equipment.
A trademark is at particular risk of genericide when the mark becomes the generic name for the goods or services on or in connection with which it is used. What is the generic term for the discipline or the services your company offers through your fitness program?
Although our company offers a wide variety of goods and services under the CROSSFIT mark, the generic name of our company’s principal service is strength and conditioning training. Sometimes the type of strength and conditioning training is referred to as “high-intensity interval training” (HIIT) or “functional fitness.”
Has the use of CrossFit as a generic term caused commercial damage to your company?
The CROSSFIT brand is stronger than ever thanks to global efforts to combat intentional infringement and genericide. In many instances, however, CrossFit has sought to vindicate its rights for injunctive purposes only to protect the CrossFit community from being tricked into attending classes with instructors not properly trained, supervised, and insured as required by CrossFit. The commercial impact has primarily been significant spending on legal fees.
In which countries do you believe there is a higher risk of genericide?
The risk in a country is generally proportional to the number of CrossFit affiliates and customers. The more people that say CrossFit, the more likely some people are to misuse the mark, and the greater the incentive for competitors to attempt to free-ride off the goodwill of the CROSSFIT brand through systematic disregard for trademark rights. The United States remains CrossFit’s largest market.
Has the company sent cease and desist letters to other competitors who use CrossFit to identify or designate similar fitness programs? If so, in what percentage of cases have the competitors agreed to stop using the CROSSFIT trademark?
We regularly send demand letters to any person or entity impermissibly using the CROSSFIT mark, or any other marks we own, whether intentional infringement or unintentional genericide. We have achieved success in virtually 100 percent of these cases. One of our greatest assets is a highly vigilant community of consumers and licensees who take pride in their connection to the brand and who are eager to assist in its growth and protection. We use an accessible IP theft program to collect this information from the community.
In what percentage of the aforementioned cases did the competitors argue that they would not stop using “CrossFit” for being a word of common use for this type of fitness program? How did the company respond to this?
Occasionally, a competitor argues that it “must” be allowed to use “CrossFit” to describe what it does, either because the competitor does not wish to take the time and effort to receive proper credentialing or licensing, or because the competitor is too lazy to create and grow its own brand. There is no legal support for this misguided position, and in such cases, a court will cause the competitor to take involuntary corrective action.
Have you taken any legal actions against competitors who use CROSSFIT as a trademark or as a generic term?
Does the company take any actions in order to educate the general public that CROSSFIT is a trademark and not a generic term, for instance, by means of advertisement campaigns?
Yes, but the best action is constantly strengthening the commercial value of the CROSSFIT brand through excellence and strategic partnerships.
Which other actions does the company take to avoid misuse of the trademark?
In addition to our regular enforcement actions, we educate our licensees on proper use of the CROSSFIT mark and have a robust IP theft program for reporting infringements and other improper uses of the CROSSFIT mark. For our size, we have a relatively large legal department to address these issues, reinforcing the value of the brand.
In which countries does the company take more actions in order to avoid genericide?
We take actions everywhere there is an issue. Our efforts have targeted infringements and improper generic uses all over the world.
Has the trademark CROSSFIT been opposed in its registration process in any country because the authorities considered it to be a word of common use?
Yes, initially. But we have argued vigorously against such objections, even suing a trademark office in court. There has never been a final, non-appealable decision adverse to the registrability of the CROSSFIT mark.
Are there any lawsuits from third parties seeking the cancellation of the CROSSFIT mark due to genericide? How were they decided?
Yes, actions of this nature have been filed in the United States and in the European Union, typically as counterclaims in infringement actions. None has been successful. Rather, these matters have reinforced the protectability and fame of the CROSSFIT mark.
Ironically, a trademark may become a “victim of its own success.” What are your recommendations to other brand owners that are initiating a business for using their trademark correctly from the start in order to avoid genericide?
Determine the generic name of the goods and services you offer, and position yourself as a brand offering those goods and services. Use a licensing program to grow your brand as a brand outside of your core good/service. And make certain that all employees and licensees authorized to use the mark understand proper trademark use. INTA provides great educational materials for this purpose.
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© 2018 International Trademark Association
“This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”