You’re in the midst of planning your upcoming fitness class schedule and you’re choosing fitness class names and you have a few questions. Questions like:
Can I call my classes anything I want? Is it legal for me to hold Insanity, BodyPump, P90X or Zumba classes and advertise it? Or what about cross fit training, even though I am not a certified cross fit trainer, am I able to use their methods and advertise that I am teaching cross fit style? What about hot yoga? Or High Intensity Interval Training?
Short Answer: No. and Maybe.
The popularity of certain fitness modalities and class types have made them valuable brands. Many of them, including P90X, Zumba, BodyPump, Insanity, and Crossfit protect their brand value through federal trademark protections.
Trademark protections are based on classes or categories. Some of the classes well-known fitness brands have successfully registered for trademark protection include:
- video tapes, cassettes, DVDs, and CDs;
- for various clothing;
- for exercise equipment;
- for physical fitness and dietary instruction; and
- for supplements.
- for scientific research and consultation services;
- for audio and video recordings;
- for clothing;
- for fitness training;
- for footwear.
As you can see above fitness training and physical fitness and dietary instruction are just two classifications that protect a brand and potentially prevent you from using a trademarked name as the name of your fitness class.
If you are certified to teach a specific modality or class your licensing documentation may provide you with a license to use the trademarked name to advertise the class or modality you are teaching. But if you are not certified to teach a specific class or modality and it is a trademarked name, it is highly unlikely you have a legal right to use that name to promote or advertise your class or business.
While Trademark registration is handled by each country individually, generally Registered Trademarks enjoy a presumption of validity around the world. Proper use of Trademarks serve to distinguish products and services from those of other companies, serves to prevent confusion among consumers, and is designed to help prevent damage like “tarnishment, dilution, and genericization” of the mark and the Company.
So what is “genericization”? and why does it matter to you as a fitness professional who is looking at what you name the classes you teach and describing the services you offer. It is important that by definition, a trademarked name is not a generic phrase; and in order to prevent it becoming a generic phrase the trademark owners will often take legal action to ensure that their trademarked name is not being used without their permission. A phrase becomes generic when consumers understand them as a common or class name for the goods or services. By definition, consumers are unable to indicate a particular source of the goods of services – and it is for this reason that generic terms cannot be registered as trademarks. A trademark is effectively a monopoly on providing goods or services with that name and prevent other businesses and individuals from describing goods and services with the same name.
As an example of the way the United States Patent and Trademark Office (USPTO) considers the issue of generic phrases as compared with trademarkable names, consider that while Bikram Choudhury owns registered trademarks – BIKRAM YOGA and BIKRAM – for “educational services, namely conducting classes, seminars, conferences, and teaching training in the fields of yoga instruction, yoga philosophy, yoga theory and practice, […] marketing of yoga instruction, physical fitness, […] and health, and distributing course materials in connection therewith,” he also attempted to claim federal trademark registration for HOT YOGA for “conducting yoga instructional classes, seminars, conferences, workshops, and retreats.” The USPTO refused to grant HOT YOGA on the grounds that the view it as generic for Choudhury’s services and therefore unable to be registered under Trademark Act Section 23(c), 15 U.S.C. §1091(c). This hasn’t stopped Choudhury from filing two lawsuits alleging trademark and copyright infringement. One suit settled with the defendant agreeing not to offer “hot yoga” at their studio, although it is not clear that they needed to have done so.
If you advertise yourself or your business as offering services, including fitness classes or training modalities, for which you are not certified and trained you also risk an allegation of tarnishing the trademarked brand. Quality assurance and brand consistency are one of the motivations for a company trademarking service and product marks and if you advertise that you are providing a service that you are not trained and qualified to provide you are potentially tarnishing the trademark owners brand.
You also risk being accused of consumer fraud. If you promote yourself as teaching or instructing a specific modality, then it is reasonable for your clients to assume you are trained to teach that modality or class.
In order to teach a class or modality with a name protected by trademark you will need to be authorized under a limited trademark license. This is usually part of the certification process. A trademark license is an agreement between a trademark owner and a third party in which the licensor (the owner of the trademark) permits the licensee (the fitness professional) to use its trademark in commerce pursuant to specific terms. By obtaining a trademark license you will not have to risk defending allegations of trademark infringement.
Trademarks are assets and many fitness businesses rely on Trademarks to identify their products and services, and to distinguish them from those of their competitors. If a business allows their Trademark to fall into generic use in relation to an area or classification, they would no longer identify their Company as the exclusive source of those products and services. They are ultimately trying to avoid confusion between what is their service or product and what is not. That is the long way of saying, no, you can’t just name your fitness classes with a trademarked name or describe the services you provide with a trademarked name and not risk being sued for copyright and trademark infringement.