SpinningFitness.com TM issue or not? PLEASE HELP!

[Roo78]

Hello everyone...I just got this email for SpinningFitness.com...would love to hear some suggestions on how I should handle this, as this is the first time dealing with this. I feel that the term spinning is generic in nature and doesn't warrant any TM issues. ANY HELP YOU CAN GIVE IS GREATLY APPRECIATED!


RE: Unauthorized use of the Mad Dogg Athletics, Inc. Spinning® trademarks - www.spinningfitness.com



Dear Mike

You are receiving this email due to the fact you are in violation of our trademark rights by misusing one or more of our trademarks related to our Spinning® indoor cycling products or program. Specifically, our Spinning® trademarks are being misused in the domain name you own called “spinningfitness.com” and the content related to indoor cycling that is referred to as “Spin” or “Spinning” on your website. Our company, Mad Dogg Athletics, Inc. (MDA), are the owners of the international and federally registered and common law trademarks and service marks SPIN®, SPINNING®, and SPINNER® (i.e., the "Spinning Marks"). These Marks are used for a variety of products and services, including: providing training and instruction to others by simulating an outdoor bicycle workout on a stationary bicycle; exercise equipment; clothing; pre-recorded videotapes, DVDs, audio cassettes and compact discs featuring exercise and fitness instruction. MDA uses and licenses others to use these valuable trademarks and service marks, as well as related logos, only in connection with authorized products and services related to our SPINNING® brand.

The terms "Spin," “Spinning,” and “Spinner” are brand names created and owned by MDA, which MDA has used for nearly 20 years. They are not the generic terms for indoor cycling products or programs. MDA uses its Spinning Marks to indicate itself as the source of origin of its proprietary indoor cycling program, which is offered exclusively by MDA and others licensed by MDA. The Spinning® program is an extensive program of exercises to be used on MDA's patented Spinner® bike (currently manufactured for MDA by Star Trac®) via the use of certified Spinning® instructors trained by MDA in the proper, effective and safe use of the Spinner® bike. Any misuse of MDA's Spinning Marks confuses the consumer and makes it appear that Spin or Spinning are the generic and proper terms for indoor cycling, when they are not. You are not affiliated with our company and do not have the authority to use our trademarks, thus you must relinquish ownership of the domain spinningfitness.com and remove all references to our trademark from your website.

Please refer to the two screen shots below - In order to protect MDA's intellectual property rights, we insist that you do the following: 1) refrain from using the terms “Spin,” “Spinning,” and “Spinner” in reference to any products sold, reviewed or promoted on your website (2) refrain from using the Spinning Marks as meta tags and key words in your source codes on your website and (3) relinquish your domain name spinningfitness.com - as your domain is with godaddy, this can be easily accomplished by transferring the domain to our godaddy account – our account number is 4465559 – the email associated with the account is ....... You must adhere to our requests no later than 5:00pm, Friday July 20, 2012.

MDA has invested substantial time, effort and money to develop, promote, and protect MDA’s products and services which bear the Spinning® Marks. We cannot allow your improper use of our Spinning Marks to damage the value and goodwill we have spent nearly 20 years developing. Therefore, please confirm IMMEDIATELY that you agree to comply with the terms set forth above by responding to this email with the following statement “I will comply with the demands set forth in this email.”

Regards,

Rhona Attwater
Executive Assistant to
CEO John Baudhuin



Mad Dogg Athletics, Inc.
2111 Narcissus Ct., Venice, CA 90291
Phone: 310.740.8834
Fax: 310.823.7408
www.maddogg.com

Follow MDA on Facebook and Twitter.



SPIN®, Spinner®, Spinning®, The Spinning Logo®, Bodyblade® and Peak Pilates® are registered trademarks that are owned or used under exclusive license by Mad Dogg Athletics, Inc.



Thanks again....and looking forward to seeing your responses!

 

[DU]

Who's Mike?

Spinning Fitness is not generic and is doubly not generic when you put ads related to their TM on it.

Give me one legitimate use of Spinning Fitness that does not involve "spinning" on a bike? (They have TMs covering multiple aspects of fitness products). Good grief.

If the letter is legit then I would (a) Turn the domain over setting the option CHANGE NAMESERVERS (b) I would not acknowledge any blame/responsibility.

I would also consider not including their account / email combination in a post on a public forum. Double good grief.

---------- Post added at 02:25 AM ---------- Previous post was at 02:21 AM ----------

To everyone:

You can disagree with me - but if I read one post on the term "Apple" being generic in this thread and I will personally give you negative reputation.

 

[Roo78]

what do you mean by 'turn the domain over setting the option change nameservers'?

 

[DU]

what do you mean by 'turn the domain over setting the option change nameservers'?

When you transfer the name you can transfer the name so that nameservers/whois switch to the default nameservers/whois of the receiving account.

That way it gets set with whatever they want and you don't have to do anything. I believe that's an option of GoDaddy. I believe you are entitled to ask for your money back but I don't think it's worth it.

 

[bmugford]

The terms "Spin," “Spinning,” and “Spinner” are brand names created and owned by MDA, which MDA has used for nearly 20 years. They are not the generic terms for indoor cycling products or programs.

I am sorry but the term "Spin" is generic for that usage. There are thousands of spin classes that have nothing to do with this companies TM.

They have more of a claim to the term "Spinning", but even that is debatable.

In this case the secondary term "Fitness" makes the domain more confusing to their TM.

I don't think this domain is really worth putting up a fight over.

Brad

 

[cartoonz]

Actually, they have the term "Spinning" pretty much locked up for anything relating to fitness, fitness information, computer programs relating to fitness, etc...

OP - Give it up and walk away.

 

[DU]

I am sorry but the term "Spin" is generic for that usage. There are thousands of spin classes that have nothing to do with this companies TM.

They have more of a claim to the term "Spinning", but even that is debatable.

Generic and debatable how? How do you think the name spin class came into being?

Maybe diluted as it is becoming just a term but they have about 10 classes for their TM locked up and those gyms may have their equipment. of course the class should have a little r next to it

 

[ujaladil]

I believe that an option of Go-daddy but even that is debatable how much thanks

 

[Kate]

Now the real test of domain value: is it worth a legal fight ?

 

[OnlineDomainCom]

This needs a lot of researching to decide what to do.

The domain is behind privacy. How do they know your name?

 

[cartoonz]

This needs a lot of researching to decide what to do.

Actually, a single search of the USPTO TM database is all that's needed to realize there is no way you could ever keep that domain, let alone use it for anything related to fitness or health.

 

[alien51]

If the "Spinning" brand is not known in a country (say, Korea), and someone in that country uses the term "SpinningFitness" as the name of a fitness studio with different marks and logos. Would that pass the legal test?

I'm not sure the "Spinning" brand is as universal and widely known as Apple, Pepsi, or Google.

 

[OnlineDomainCom]

That is why I said that researching is needed. I had no idea that spinning is a brand, here in Greece. I thought it was a synonym of cycling or something.

 

[.NJ]

You have to ask yourself one question.

Is this name worth the time and money to fight for?

The only true end-user would be Spinning.com, and they are the ones after you. So obviously they are out of the game here.

If this was a high value name that you paid for and you have alot invested, then you would probably want to consider other avenues. But Im assuming the name was either a hand-reg or purchased for close to that.

Just give the name up and move on IMO. Just be thankful you do not have a large investment in the name.

 

[cartoonz]

If the "Spinning" brand is not known in a country (say, Korea), and someone in that country uses the term "SpinningFitness" as the name of a fitness studio with different marks and logos. Would that pass the legal test?

I'm not sure the "Spinning" brand is as universal and widely known as Apple, Pepsi, or Google.

That is why I said that researching is needed. I had no idea that spinning is a brand, here in Greece. I thought it was a synonym of cycling or something.

You're not seeing the forest through the trees...

Look, the only reason why anybody, anywhere, would equate "Spinning" or "Spin" with "Fitness" is because they know what a "Spin class" is or because they know that there is a type of machine at the gym that is referred to in that fashion. Why is that? Duhh... because the Trademarked Spinning equipment/program is known to them.

Not that ignorance would make it any more likely that one could keep/use that domain anyway, but all this speculation of how it "could maybe be allowed IF...." is total nonsense.

Face it, "Spinning" and "Spin" are totally locked up in at least 10 different classes of TM's related to fitness, health, exercise machines, etc. Just because someone lives under a rock in Botswana does not mean they get a pass... especially when they never would have come up with the phrase "Spinning Fitness" without actually knowing that there is a type of machine/program that describes...

Game, Set, Match > Winner - TM holder.

 

[alien51]

Look, the only reason why anybody, anywhere, would equate "Spinning" or "Spin" with "Fitness" is because they know what a "Spin class" is or because they know that there is a type of machine at the gym that is referred to in that fashion. Why is that? Duhh... because the Trademarked Spinning equipment/program is known to them.

Like i said, "Spinning" IS NOT KNOWN as an equipment/program where i live. Neither is it known to the Greek guy who posted here too.

If we take the domain cybersquatters out of the discussion, and focus on an end-user who.... BY SOME GODLY COINCIDENCE.... used two DICTIONARY words "Spinning" and "Fitness" for a domain name for his use in his fitness studio business with different logos and marks, my basic question is, is there a VALID LEGAL ARGUMENT to defend the case???

Which brings up the question: Is the brand "Spinning" a universal global brand that has earned enough brand awareness (like Pepsi, although Pepsi is not a dictionary word unlike Spinning and Fitness) that the law has presumed that everyone in the planet knows if you say "Spinning", there is no way you can think about anything but a freaking gym bicycle?

If you examine the US TRADEMARK RECORD for the brand name "Spinning", it says on the record that it applies to "bicycle pedals and pedal clips; bicycle seat covers". Does this entity really have trademark claims for a "fitness program" that has nothing to do with bicycles??????

If you search the US TRADEMARK DATABASE for the term "SPINNING", another registrant owns a trademark for the brand "STILL SPINNIN' THE CURE TO THE COMMON GYM", which was granted in 2010 long after the word Spinning was already trademarked by Mad Dogg.

 

[cartoonz]

No, there is no valid legal argument.
At least not one that would be effective

The guys that invented "Spinning" fitness and equipment have the term completely locked up in far more categories than bike pedals...

Is the mark as famous as Coca Cola or Pepsi? No
Does it have to be? again, No.
I'll tell you that it is a hell of a lot more famous than you want to believe though...

Like I said, this dog won't hunt. In any fashion, on any river, in any bush in any country. Just won't fly. The OP will not be able to keep this domain. Period.