Pilates Method Alliance, Inc.v.Pilates, Inc.

Trademark Trial and Appeal Board

Jul 8, 2004

No. 91154584 (T.T.A.B. Jul. 8, 2004)

Butler Mail date: July 8, 2004
Opposition No. 91154584
Pilates Method Alliance, Inc.
v.
Pilates, Inc.
Before Hanak, Chapman and Holtzman, Administrative Trademark
Judges.
By the Board:
Applicant seeks to register the mark PILATES STUDIO for
“providing lessons, training, workshops, and seminars for
exercise and physical conditioning; physical education services;
physical fitness instruction; training in the use and operation
of exercise equipment; and teaching in the field of physical
fitness” in Class 41 and “providing facilities for exercise and
physical conditioning; physical fitness consultation; providing
physical rehabilitation and physical therapy” in Class 42. In
its application Serial No. 78048238, filed on February 14, 2001,
applicant claimed first use and first use in commerce since 1941;
and disclaimed the word PILATES. Applicant also claimed
ownership of the following registrations on the Principal
Register: Registration Nos. 2192971 for the mark PILATES
PERFORMER for “exercise equipment, namely, a portable metal
framed bed-like platform or carriage that slides along tracks and
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91154584
2
that uses springs for resistance; the carriage is moved by
pushing against a bar or by pulling on looped strips with the
arms or legs, specifically made for home use”;1 1960710 for the
mark PILATES for “exercise and athletic clothing, namely sweat
pants, pants leotards, tights, bathing suits, shorts, shirts, T-
shirts, sweatbands, headbands, hats, underpants and bras”;2 and
1602929 for the mark PILATES STUDIO for “providing facilities for
exercise and physical conditioning.”3 Applicant further claimed,
in its application, that the mark, PILATES STUDIO, has become
distinctive of the services as evidenced by ownership of
Registration No. 1602929 on the Principal Register of the same
mark for related goods and services.
As background, opposer alleges in the notice of opposition
that it is a not-for-profit international alliance of individual
and business members dedicated to preserving the integrity of the
Pilates method of exercise and providing an organization for
members of the Pilates community to exchange information.
Opposer alleges that it was formed in February 2001, shortly
1 Such registration issued on October 6, 1998, claiming first use and
first use in commerce on January 1, 1996. On December 11, 2000,
registrant filed a Section 7 amendment seeking to add a disclaimer of
the term PILATES, and the amendment was entered by the USPTO on
January 27, 2001.
2 Such registration issued on March 5, 1996, claiming first use and
first use in commerce on January 1, 1993. Section 8 affidavit
accepted; Section 15 affidavit acknowledged.
3 Such registration issued on June 19, 1990 pursuant to Section 2(f) of
the Trademark Act, and with a disclaimer of the term STUDIO; claiming
first use and first use in commerce on January 1923. The registration
was cancelled by the USPTO on January 3, 2002 under Section 37 of the
Trademark Act, pursuant to the order of the court in Pilates, Inc. v.
Georgetown Bodyworks Deep Muscle Massage Centers, Inc. a/k/a
Georgetown Bodyworks Fitness Centers, Inc. and Willard A. Green, 157
F.Supp.2d 75 (DDC 2001) (hereinafter Georgetown Bodyworks).
Opposition No. 91154584
3
after the decision in Pilates Inc. v. Current Concepts Corp., 120
F.Supp.2d 286, 57 USPQ2d 1174 (SDNY 2000) (hereinafter Current
Concepts), and that opposer, its members and the public will be
damaged by registration of PILATES STUDIO. Opposer alleges that,
with respect to applicant’s claim of ownership of Registration
No. 1602929 for the mark PILATES STUDIO for “providing facilities
for exercise and physical conditioning,” the District Court for
the District of Columbia in Georgetown Bodyworks, supra, found
that PILATES STUDIO was not registrable, and on August 7, 2001
ordered that the USPTO cancel Registration No. 1602929 for the
mark PILATES STUDIO. Opposer alleges that the court ordered the
registration cancelled in view of the earlier finding in Current
Concepts that PILATES is generic; the ensuing agreement by
applicant to disclaim the term PILATES in the registration; and
the refusal by the USPTO to enter the proposed post registration
amendment to include a disclaimer of PILATES for the registration
because the term STUDIO was already disclaimed.
As grounds for the opposition, opposer alleges that the term
PILATES STUDIO is generic; that applicant made false statements
to the USPTO concerning its claimed 1941 date of first use and
first use in commerce; that applicant’s rights to the term
PILATES STUDIO were allegedly acquired by assignment; that, in
accordance with the court’s determination in Current Concepts,
because the assignment to applicant of the mark PILATES was found
to be an invalid assignment in gross, the assignment to applicant
of the PILATES STUDIO mark, made in the same transaction, is also
Opposition No. 91154584
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an invalid assignment in gross; that applicant knew others were
entitled to use, and had the right to use, PILATES STUDIO, but
submitted a declaration to the contrary as part of its
application; that applicant’s claim of acquired distinctiveness,
based solely on its ownership of Registration No. 1602929, was
invalid, and applicant had a duty of candor, when the application
was still pending, to inform the USPTO that the court had ordered
cancelled the registration upon which applicant was basing its
claim of acquired distinctiveness; and that applicant’s claim of
acquired distinctiveness is insufficient because it cannot
provide evidence of substantially exclusive and continuous use of
the applied for mark for the five years immediately preceding the
filing date of the application.4
In its answer, applicant, acknowledging the decisions and
holdings in Current Concepts and Georgetown Bodyworks, otherwise
denies the salient allegations of the notice of opposition, and
affirmatively asserts that opposer does not have standing to
bring this opposition.
This case now comes up on opposer’s motion for summary
judgment on each of the claims set forth in the notice of
opposition, and applicant’s cross-motion for summary judgment on
its affirmative defense that opposer does not have standing.5
4 The Board notes that the application does not contain a claim of
acquired distinctiveness based on substantially exclusive and
continuous use of the mark for the five years prior to the filing date
of the application, but rather, refers only to ownership of the
registration.
5 The parties’ stipulated protective agreement, filed with the Board on
October 22, 2003, has now been associated with and entered into the
Opposition No. 91154584
5
Preliminary matters addressed
Before turning to the parties’ respective motion and cross-
motion for summary judgment, the Board addresses the following
matters: (i) applicant’s objection to the timeliness of
opposer’s motion for summary judgment; (ii) opposer’s objection
to applicant’s submission of evidence in its response to
opposer’s motion for summary judgment, assertedly requested by
opposer during discovery not provided by applicant; (iii)
opposer’s objection to applicant’s conditional proposed amendment
to its application, submitted in response to opposer’s motion for
summary judgment, to change the basis of its claim of acquired
distinctiveness; and (iv) a discussion of the decisions in
Current Concepts and Georgetown Bodyworks, supra.
Applicant’s objection to opposer’s motion for summary judgment on
the basis of timeliness
In its March 2, 2004 response to opposer’s motion for
summary judgment, applicant objects to the timing of opposer’s
motion, filed February 2, 2004. More specifically, applicant
argues that it “…never received a response” to opposer’s motion
of October 14, 2003 to extend discovery and trial dates.
Suffice it to say that opposer’s motion for summary judgment
is timely, having been filed prior to the commencement of the
first testimony period as reset by the Board’s order of January
13, 2004 granting opposer’s October 14, 2003 motion to extend
electronic file. The Board regrets the delay occasioned in entering
the protective agreement.
Opposition No. 91154584
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dates. See Trademark Rule 2.127(e); and TBMP Section 528.02 (2nd
ed. Rev. 1 March 2004).
In view thereof, applicant’s objection to the timeliness of
opposer’s motion for summary judgment is overruled.6
Opposer’s objection to applicant’s evidentiary submissions
In its response to opposer’s motion for summary judgment,
applicant indicates that it “…now has a number of Exhibits, B-BC,
which were not prepared at the time it responded, May 22, 2003,
to Opposer’s Interrogatory Number 20 in Exhibit 15, which do
refute the causes of action raised in the Notice of Opposition.”
Opposer, in its reply brief, comments on “…the impropriety of
applicant’s admission of presenting evidence after the close of
discovery that it believes are material to the case, and which
existed prior to the close of discovery….” Opposer, nonetheless,
acknowledges that the Board may choose to review all the evidence
in making its decision in this case and, thus, submits its reply
brief addressing the merits of applicant’s evidentiary
submissions.
6 Informationally, to the extent that applicant is arguing it did not
receive a copy of the Board’s January 13, 2004 order granting
opposer’s October 14, 2003 motion to extend dates, applicant is
referred to the TTABVUE database now available at www.uspto.gov. This
database was made available to the public in the fall of 2003 and, in
addition to being a status resource, allows viewing and printing of
most filings, motions and orders in any particular proceeding.
Moreover, the Board has provided on-line status databases for
several years, albeit the older database only provided status and did
not permit the viewing of documents. Cf. Old Nutfield Brewing
Company, Ltd. V. Hudson Valley Brewing Company, Inc., 65 USPQ2d 1701
(TTAB 2002) (“If opposer had any doubt as to the official status of
the case at any time, it had only to call the Board, view the
proceeding information on the Internet, or inspect (or have an agent
inspect) the public file in person at the Board.”)
Opposition No. 91154584
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Applicant has not explained why its submissions were not
previously prepared in response to opposer’s discovery requests
and, generally, a party found to have purposefully withheld
discovery responses may be precluded later from introducing
evidence so purposefully withheld. See, for example, TMBP
Sections 527.01(a) and 527.03 (2nd ed. Rev. 1 March 2004).
However, because opposer addressed the evidence on the merits and
because this involves a summary judgment motion, opposer’s
objections to the evidence are overruled.
Applicant’s proposed amendment to its application Serial No.
78048238
In its response to opposer’s motion for summary judgment,
and addressing, in part, opposer’s allegations that applicant’s
claim of acquired distinctiveness, based solely on Registration
No. 1602929, is insufficient, applicant submitted an affidavit
from its owner7 in support of acquired distinctiveness based on
applicant’s substantially exclusive and continuous use of the
mark PILATES STUDIO for all recited services for the five years
preceding the filing date of the application. Applicant provides
the statement in the event “… the Board finds that the Examining
Attorney inappropriately approved the 2(f) registration under an
existing mark.”
Opposer objects to applicant’s conditional proposed
amendment, arguing that it does not consent to the proposed
7 Mr. Gallagher, affiant, identifies himself as “owner” of Pilates,
Inc. In Georgetown Bodyworks, 157 F.Supp2d at 78, he is identified as
“President and sole shareholder” of Pilates, Inc.
Opposition No. 91154584
8
amendment; that the proposed amendment changes the basis for
applicant’s claim of acquired distinctiveness and, as such, is a
fundamental and substantive change in the application; and that
the proposed amendment is, in any event, insufficient.
An application which is the subject matter of an inter
partes proceeding before the Board may not be amended in
substance except with the consent of the adverse party and the
approval of the Board or upon motion granted by the Board. See
Trademark Rule 2.133(a); and TBMP Section 514 (2nd ed. Rev. 1
March 2004). Opposer affirmatively states it does not consent to
applicant’s conditional proposed amendment. Moreover, because
any such amendment would be futile for reasons that will become
evident later in this decision, opposer’s objection to
applicant’s conditional proposed amendment is sustained and
applicant’s request to amend its application is denied.
The Two Court cases
The decisions in the Current Concepts and Georgetown
Bodyworks cases, supra, provide an historical backdrop to the
present controversy before us. In addition, the parties
reference the cases and findings made therein by the courts in
their respective arguments. Thus, we will briefly summarize the
cases before we turn to the merits of parties’ respective motion
and cross-motion for summary judgment.
Current Concepts involved two federally registered
trademarks asserted by plaintiff Pilates, Inc. (applicant
herein), both for the term PILATES, for exercise instruction
Opposition No. 91154584
9
services8 and exercise equipment.9 Defendants in that case
asserted affirmative defenses including that the marks were
generic; that the marks were abandoned; that the marks were
improperly assigned in gross; and that the marks were registered
fraudulently. Although the defendants also challenged the
registered PILATES STUDIO mark (Registration No. 1602929), the
court determined that, because the defendants lacked standing
with respect to this mark and the mark was not asserted against
defendants, there was no justiciable case or controversy with
respect to the PILATES STUDIO mark.10 The court found, among
other findings, that PILATES is generic for exercise instruction
and exercise equipment; that the PILATES mark for exercise
equipment had been abandoned by Pilates, Inc.’s immediate
predecessor in interest; that the transfer to Pilates, Inc. from
its immediate predecessor in interest of the PILATES mark for
instruction services was an invalid assignment in gross; and that
the application for registration of the PILATES mark for
equipment, filed by Pilates, Inc., contained material and knowing
misrepresentations and the ensuing registration was, thus,
8 Registration No. 1405304 issued on August 12, 1986 to Aris Isotoner
Gloves, Inc., and was subsequently purchased by Pilates, Inc. This
registration was cancelled by the USPTO pursuant to the order of the
court, in accordance with Trademark Act Section 37.
9 Registration No. 1907447 issued on July 25, 1995 to Pilates, Inc.
(applicant herein). This registration as cancelled by the USPTO
pursuant to the order of the court, in accordance with Trademark Act
Section 37.
10 See Current Concepts 120 F.Supp.2d at 290-294, 57 USPQ2d at 1176-
1181 for a detailed history of the Pilates exercise method, use of the
term PILATES, involved businesses, and assignments. See Georgetown
Bodyworks 157 F.Supp.2d at 77-79 for a condensed background
recitation.
Opposition No. 91154584
10
invalid. In its decision of October 19, 2000, the court ordered
the two PILATES registrations cancelled. Subsequently, on
December 4, 2000, the parties entered into a settlement agreement
in accordance with the court’s decision wherein Pilates, Inc.
agreed, among other things, to submit post registration
amendments seeking to disclaim the term PILATES in certain
registrations, including Registration No. 1602929 for the mark
PILATES STUDIO.
The Georgetown Bodyworks case involved Pilates, Inc.’s
asserted federally registered PILATES STUDIO mark for providing
facilities for exercise and physical conditioning (Registration
No. 1602929), against which the defendants asserted
counterclaims, including one for declaratory relief on the ground
that the mark was invalid and should be ordered cancelled because
plaintiff’s requested amendment to disclaim PILATES in the mark
PILATES STUDIO “…creates an invalid non-registrable mark.”11 The
court noted that the registration was registered with a
disclaimer of the term STUDIO;12 that, subsequent to the decision
in Current Concepts, Pilates, Inc. filed a post registration
amendment to enter a disclaimer of the term PILATES; and that
such amendment was denied on January 23, 2001 by the USPTO
because the attempt to disclaim PILATES when there already
11 During the pendency of the Georgetown Bodyworks case, the parties
agreed that Pilates, Inc.’s asserted PILATES marks and registrations
were no longer contested in view of the cancellation of the
registrations by the USPTO, as ordered by the court in Current
Concepts.
12 The court did not comment on the registration being under Trademark
Act Section 2(f), acquired distinctiveness.
Opposition No. 91154584
11
existed a disclaimer of the term STUDIO would result in an
impermissible disclaimer of the entire mark. The court observed
that Pilates, Inc. filed a new application on February 20, 2001
(the application which is the subject of this instant
opposition), “… in which the term STUDIO is not disclaimed, based
on a secondary meaning theory.” See Georgetown Bodyworks at 82.
The court indicated this apparent attempt to re-register
previously disclaimed matter was not before it because it has no
bearing on the initial registration for PILATES STUDIO; and
limited its determination to “…the validity of the original
PILATES STUDIO mark (Reg. No. 1602929), and its attempted
amendment.” Id. The court found that, “…because a composite
mark cannot be amended to disclaim all portions of the mark
individually and remain valid, the original PILATES STUDIO mark
is invalid and should be cancelled.” Id. In view of this
finding, the court expressly stated that it need not consider
whether PILATES STUDIO is generic or whether the mark was the
subject matter of an invalid assignment in gross. Id.
Opposer’s motion and applicant’s cross-motion for summary
judgment
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issue of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56. The movant is held to a stringent
standard. See 10A Wright, Miller & Kane, Federal Practice and
Procedure: Civil 3d § 2727 (1998). A genuine dispute with
Opposition No. 91154584
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respect to a material fact exists if sufficient evidence is
presented that a reasonable fact-finder could decide the question
in favor of the non-moving party. See Opryland USA Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992). Thus, all doubts as to whether any particular
factual issues are genuinely in dispute must be resolved in the
light most favorable to the non-moving party. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ 1542 (Fed.
Cir. 1992).
We turn first to applicant’s cross-motion for summary
judgment on its affirmative defense concerning opposer’s
standing.
Applicant’s cross-motion for summary judgment
In support of its cross-motion, applicant argues that
opposer is “… a representational organization and has not pled a
personal interest in this matter, either for itself or its
members….” Applicant further argues that opposer has “… only
alleged that they and the public will be damaged without
describing how…” they will be damaged.
In response, opposer argues that, as an association, it has
standing to represent its members where any organizational member
on its own would have standing to sue; that, because it has
alleged that applicant’s mark is generic, it has standing because
any member of the public could sue a trademark owner on the basis
that the term is generic; that the interests opposer seeks to
protect are germane to its organizational mission; and that the
Opposition No. 91154584
13
relief sought, denial of registration, results in an overall
protection of the Trademark Register, and does not require the
participation of the individual members.
Section 13 of the Trademark Act permits “[a]ny person who
believes that he would be damaged by the registration of a mark”
to file an opposition thereto. To establish standing, it must be
shown that a plaintiff has a “real interest” in the outcome of a
proceeding; that is, plaintiff must have a direct and personal
stake in the outcome of the opposition. See Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). It has been held
that trade associations have standing to oppose registration of a
mark. See Institut Nat’l Des Appellations D’Origine v. Vinter
Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992);
Jeweler’s Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d
490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622
(TTAB 1992), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988)
(opposition was sustained on its merits); and Tanners’ Council of
America, Inc. v. Gary Industries, Inc., 440 F.2d 1404, 169 USPQ
608 (CCPA 1971). Where registration is opposed on the ground of
descriptiveness or genericness, an opposer “… need only assert an
equal right to use the mark for the goods. Proprietary rights in
opposer are not required.” See Jeweler’s Vigilance Committee, 2
USPQ2d at 2024.
Opposer has properly alleged its standing by virtue of its
allegations that it believes it, its members and the public will
be damaged by the registration of the term PILATES STUDIO.
Opposition No. 91154584
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Moreover, opposer has established its standing as a matter of
law. Opposer has shown that at least some of its members use the
term PILATES STUDIO. One example is provided by Balanced Body,
Inc. on its website to assist the consuming public in finding a
geographically convenient Pilates studio. See opposer’s Exhibit
10, paragraph 5 and accompanying exhibit. Another example is
provided by Stotts Pilates, a subsidiary of Merrithew
Corporation, on its flyer for STOTT PILATES STUDIOS offering
workshops. See opposer’s Exhibit 12, paragraph 3 and
accompanying exhibit.
In view thereof, applicant’s cross-motion for summary
judgment on the basis that opposer lacks standing is denied.
Opposer’s motion for summary judgment
As explained above, there is sufficient evidence to show
that no genuine issue of material fact exists as to opposer’s
standing. Thus, opposer has established standing. We now
consider whether any genuine issue of material fact exists as to
opposer’s claim that PILATES STUDIO is generic.
In support of its motion, opposer argues that the term
PILATES STUDIO is generic, being widely used throughout the
industry and recognized by the public as identifying instruction
in the Pilates exercise system, providing facilities for
exercise, and providing physical therapy. Opposer also contends,
in emphasizing that PILATES STUDIO when viewed as a whole is
generic, that applicant simply has combined the generic term
Opposition No. 91154584
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PILATES, as determined by the court in Current Concepts, with the
generic term STUDIO, as it is used in the industry.
Opposer’s motion is accompanied by the declaration, with
exhibits, of its attorney, Gordon E.R. Troy, who also identifies
himself as a member of opposer’s board of directors. Among the
exhibits attached to the Troy declaration are examples of use of
the term PILATES STUDIO by Pilates professionals not affiliated
with or licensed by applicant. See Exhibits 28-64. Opposer also
submitted the declarations, with exhibits, of three of its
alliance members, who further identify themselves as equipment
manufacturers, and who provide various statements, including
information from their respective customer databases about the
use as part of a name of the terms “pilates studio” or ‘“pilates”
and “studio.”’ See Exhibits 10-12.
Opposer also submitted the following: (i) a copy of the
October 1, 2003 Office action in applicant’s presently pending
related application Serial No. 78030281 for the mark THE NEW YORK
PILATES STUDIO, on the Supplemental Register, and in which
applicant offered to disclaim “both PILATES and STUDIO”; and
where the Examining Attorney, among other things, required “…a
disclaimer of the generic unitary wording PILATES STUDIO,”
supporting her requirement for the disclaimer with twenty
excerpts of stories retrieved the NEXIS database (see Exhibit 6);
(ii) three third-party registrations for instruction and exercise
services where the term STUDIO is disclaimed (see Exhibits 7-9);
(iii) a copy of the cover, title page, selected pages, and
Opposition No. 91154584
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Appendix A from The Everything Pilates Book, by Amy Taylor Alpers
and Rachel Taylor Segel, where Appendix A is a list of Pilates
instructors by state, some of whom use the terms “studio” and
“pilates studio” in their business names (see Exhibit 17); and
(iv) additional examples of use by Pilates professionals of the
term “studio” with respect to their instruction services and
services of providing facilities for independent practice of the
Pilates exercise method (see Exhibits 19-25).
In response, applicant argues that the Examining Attorney
did not refuse registration of PILATES STUDIO as generic; and
that applicant’s proffered disclaimer of both “PILATES and
STUDIO” in its pending application Serial No. 78030281 is not an
admission “… that the words are descriptive.”13 Applicant
further argues that the mark must be considered as a whole, not
in separate parts; that opposer’s dictionary definition of
“studio” does not indicate that the term refers to a location
where one may receive exercise services; and that the term
“studio” suggests “… a tie to the performing arts community…” and
“… evokes a more female friendly atmosphere…” and, as such, is
suggestive.
Applicant acknowledges that the court in Current Concepts
found the term PILATES to be generic; and that applicant “… does
not deny that the term studio is used within the Pilates
community.” Applicant argues that there is “… a proliferation of
13 Action on this application is presently suspended at Law Office 102,
and the disclaimer issue remains pending.
Opposition No. 91154584
17
locations calling themselves Pilates Studio’s (sic) since the
Georgetown decision in 2001 and maybe even the Current Concepts
decision in 2000” and further comments it may need to be more
aggressive in addressing the problem. However, applicant argues
that PILATES STUDIO is not generic because the term “… does not
simply refer to a location, but to a brand of Pilates instruction
and a place where someone can go to learn to teach that brand of
Pilates instruction”; that opposer’s three members who provided
statements are equipment manufacturers in competition with
applicant’s official equipment manufacturer and “… could benefit
by claiming they produce … Pilates Studio quality equipment”;
that there is no evidence anyone else has a superior interest in
the mark; and that applicant’s submissions demonstrate that
PILATES STUDIO is associated with applicant as its mark.
Applicant’s response is accompanied by the declaration of
its attorney and general counsel, Andrew L. Spence, and by
numerous exhibits including the following: (i) several news and
magazine articles, some electronic, where applicant is identified
as PILATES STUDIO and THE PILATES STUDIO, and which sometimes
reference its website address, www.pilates-studio.com (see
Exhibits C-Z); (ii) the cover page and table of contents for The
Pilates Pregnancy by Mari Winsor and excerpts from The Pilates®
Method by Sean P. Gallagher & Romana Kryzanowska, both of which
refer to the Pilates Studio® (see Exhibits AA and AB); (iii)
declarations or affidavits from one Pilates professional and ten
of applicant’s students stating, in relevant part, as follows:
Opposition No. 91154584
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I consider the words Pilates Studio to refer to a place
where one can receive training in the original style of
Pilates instruction developed by Joseph Pilates and carried
on by Romana Kryzanowska and later Pilates, Inc. ….
(Paragraph No. 3)
The Pilates Studio is where it all started and for others to
use this term without having received the Pilates, Inc.
training could lead consumers to believe that they are
getting the original style of Pilates instruction, when in
fact they are not. (Paragraph No. 4)
(see Exhibits AC, AE, AZ, BA-BC); and (iv) the declaration of
applicant’s owner, Sean Gallagher, concerning the history of
Pilates development and marks as understood by him, his
corporation’s acquisition of the marks in 1992 and subsequent use
of the marks, involvement in litigation over the marks, and
attempts to take reasonable steps with respect to the marks.
In addition, applicant has submitted the following: (i) a
copy of its 2000 calendar displaying The Pilates Studio®, and a
copy of its 2002 calendar displaying The Pilates Studio (see
Exhibits AF and AI); (ii) various news articles, newsletter
articles, invoices, business records, an excerpt from the 2000-
2001 Bell Atlantic Yellow Pages for Manhattan listing the phone
number and address for applicant’s Pilates Studio, and sample
advertisements, which are dated between 1992 and 2001, referring
to The Pilates Studio® and The NY Pilates Studio, both owned by
applicant (see Exhibits AG, AM-AU); (iii) more recent electronic
articles referring to The Pilates Studio (see Exhibits AK-AL);
and (iv) selected copies of the publication The Pilates Guild
News for dates between April 1995 and Spring 1998, which include
articles updating readers on the status of litigation in which
Opposition No. 91154584
19
applicant was involved at the time, and names of persons and
companies with whom applicant had come to agreement over use of
the marks PILATES and PILATES STUDIO (see Exhibits AV-AY).
Determining whether a mark is generic requires a two-step
analysis. The first step is to identify the genus (category or
class) of goods and/or services at issue. The second step is to
determine whether the term sought to be registered is understood
by the relevant public primarily to refer to that category of
class of goods and/or services. See In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) citing H.
Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
In this case, we must determine if there is any genuine
issue of material fact as to opposer’s claim of genericness. The
general categories of applicant’s services are providing exercise
instruction and providing facilities for exercise. The test for
making a determination as to whether PILATES STUDIO is generic
for the categories of identified services turns upon how the term
is perceived by the relevant public; that is, the primary
significance of the term to the relevant public. See Magic Wand
Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991).
The relevant public in this case consists of those providing and
seeking exercise instruction in the Pilates method and those
providing and seeking facilities to practice the Pilates method
of exercise, and includes the general public.
Opposition No. 91154584
20
Opposer has submitted ample evidence demonstrating how
PILATES STUDIO is perceived by the relevant public, including,
generally, advertisements, signage, and declarations from some of
its members. More specifically, opposer has made of record
numerous examples of use of the term PILATES STUDIO for such
services. Among those examples, opposer has submitted photos of
signage, including: PILATES STUDIO OF FAIRFIELD (CT); MILL
VALLEY HEALTH CLUB & SPA … PILATES STUDIO (CA); FINETUNE PILATES
STUDIO (NY); PILATES STUDIO LAKEWOOD ATHLETIC CLUB (CO); and
MINDFUL BODY PILATES STUDIO (VT).14 Opposer has submitted copies
of brochures from businesses, including: REFORMING NEW YORK
PILATES STUDIO, offering instructional classes and massage
therapy; SYNERGY SYSTEMS PILATES STUDIO, Encinitas, CA, offering
classes; THE PILATES CENTER OF OLYMPIA, Olympia, WA, offering
instruction and classes at a “fully-equipped Pilates studio…”;
BODYTIME PILATES STUDIO, offering classes, instruction, open
studio, and massage therapy; PILATES & BEYOND, Corte Madera, CA,
offering “Pilates Studio Instruction,” and “In the Personal
Pilates Studio” instruction; MOTION IN MOVEMENT … Pilates Studio,
St. Petersburg, FL, offering instruction and independent
workouts; and FREEDOM PILATES STUDIO, three locations in
Wisconsin, offering classes and physical therapy.15 Opposer
submitted a printout from Verizon’s SuperPages.com consisting of
14 See opposer’s Exhibit Nos. 44, 48, 55, 63, and 65, respectively.
See also opposer’s Exhibit No. 1 at corresponding paragraph nos. 44,
48, 55, 63, and 65 for geographical locations.
15 See opposer’s Exhibit Nos. 31, 34, 37, 50, 59, and 62, respectively.
Locations, where indicated, are in the referenced brochures.
Opposition No. 91154584
21
187 nationwide listings, including business name, address and
phone number, for businesses including the terms PILATES STUDIO
and PILATES and STUDIO in their name.16
Opposer has also provided the declarations of three of its
members who manufacture Pilates equipment. Kenneth Endelman,
owner of Balanced Body, Inc. (formerly Current Concepts) avers
that he has been in the business since 1976; that there is a
Pilates studio in virtually every state; and that Pilates
professionals call their facilities “studios” and “Pilates
studios.”17 He further avers that his company’s customer and
potential customer database brought up 145 business names using
PILATES STUDIO or containing PILATES and STUDIO in the names, six
of which he acknowledges may be affiliated with applicant. He
provides a representative listing of names retrieved, the first
three being ARETE PILATES STUDIO (Washington), ASCENDING PHOENIX
PILATES STUDIO (Arizona), and AWAKEN PILATES STUDIO (Minnesota);
fifty-one to fifty-three being ONE ON ONE PILATES EXERCISE STUDIO
(Texas), PACIFIC PILATES & YOGA STUDIO (California) and PERSONAL
BEST PILATES STUDIO (Kansas); and the last three being YOGA
TIME/PILATES STUDIO (California), YOUR PILATES & YOGA STUDIO
(Maryland), and ZELOSA PILATES & MASSAGE STUDIO (Colorado).
16 Some examples include: SOUL STRETCH PILATES STUDIO, St. Petersburg,
FL (at 76-90); IMX PILATES STUDIO, Indianapolis, IN (at 91-105); BACK
& BODY PILATES STUDIO, Norwell, MA (at 106-120); SHERI PILATES STUDIO,
Kingston, PA (at 151-165); and PILATES MOD BOD STUDIO, Orlando, FL (at
76-90).
17 See opposer’s Exhibit 10.
Opposition No. 91154584
22
Julie Lobell, owner of Peak Body Systems, avers that her
company has been in business nearly twenty years; that many
Pilates professionals call their facilities “studios” and
“Pilates studios”; that “studio” is a generic description of the
facilities where the Pilates method of exercise it taught; and
that “Pilates Studio” is a generic designation of the nature and
type of instruction services that are taught in a particular
facility.18 She also avers that her business’s database of
customers, potential customers and trainers retrieved ninety-nine
names of Pilates professionals using PILATES STUDIO in their
name, five of which she believes are affiliated with applicant;
and that a representative listing includes: A PILATES STUDIO
(California); A PILATES STUDIO (Wisconsin); ABVANTAGE PILATES
STUDIO (Arizona); PILATES STUDIO ONE (Florida); PORTLAND PILATES
STUDIO (Oregon); RANKIN STUDIO FOR PILATES (New Jersey); YOUR
BALANCED BODY PILATES STUDIO (Washington); ZELOSO PILATES STUDIO
(Colorado); and ZOE’S PILATES STUDIO (California).
Lindsay G. Merrithew, owner of Merrithew Corporation, avers
that her company has been in business for fifteen years; that
many Pilates professionals refer to their facilities and services
as “studios” and “Pilates studios”; that “studio” is a generic
description of the facilities where the Pilates method of
exercise it taught; and that “Pilates Studio” is a generic
designation of the nature and type of instruction services that
18 See opposer’s Exhibit 11.
Opposition No. 91154584
23
are taught in a particular facility.19 She also avers that her
business’s database of Pilates professionals, including customers
and prospective customers, retrieved eighty-six businesses using
the term PILATES STUDIO in their name, four of whom she believes
are affiliated with applicant; and that a representative listing
includes: ART OF FITNESS PILATES STUDIO (New York); BELLA FORMA
PILATES STUDIO (California); BENEFITNESS PILATES STUDIO (Rhode
Island); FREEDOM PILATES STUDIO (Wisconsin); VITALITY PILATES
STUDIO (Washington); and ZOOM FITNESS AND PILATES STUDIO
(California).
Opposer has submitted a copy of the October 1, 2003 Office
action with respect to applicant’s related pending application
Serial No. 78030281, for the mark THE NEW YORK PILATES STUDIO,
with accompanying NEXIS articles, some of which are excerpted as
follows: “…who plans to open Yo Play, a new yoga and pilates
studio…,” from The Post and Courier (Charleston, SC); and “Relish
also carries all the class schedules for yoga and Pilates studios
in Albuquerque,” from the Albuquerque Journal (NM).
Applicant, on the other hand, relies heavily on materials
existing before its registered trademark for PILATES STUDIO for
“providing facilities for exercise and physical conditioning” was
ordered cancelled by the court in Georgetown Bodyworks in its
decision dated August 7, 2001. That is, much of the material
submitted by applicant in its response to opposer’s motion for
summary judgment is dated from the period of time that
19 See opposer’s Exhibit 12.
Opposition No. 91154584
24
Registration No. 1602929 subsisted.20 It is clear that applicant
has expended significant effort and resources in attempting to
enforce its marks. In addition to the present opposition, and
the Current Concepts and Georgetown Bodyworks cases referenced
throughout this decision, applicant was involved in at least one
other court case, Pilates, Inc. v. Pilates Institute, Inc., dba
Institute for the Pilates Method, and Joan Breibart, 891 F.Supp.
175 (SDNY 1995) (on July 10, 1995 defendant’s motion to dismiss
was denied; and the parties were directed to submit a pretrial
scheduling order). Applicant’s owner, referring to the PILATES
and PILATES STUDIO marks he purchased in 1992, prior to forming
his corporation, submitted a declaration, stating that he has
spent millions of dollars in defense of the mark(s). See
applicant’s Exhibit AD at paragraph 9. Applicant’s submissions
consisting of certain editions of The Pilates Guild News
(apparently published by applicant) also report on applicant’s
efforts with respect to the litigation referenced above and in
coming to settlement with individuals and businesses. See
applicant’s Exhibits AV-AY; for example, Exhibit AY at p. 8 has a
list of “Organizations/Individuals who have agreed to stop using
the Pilates® Trademarks”).
20 See, for example, applicant’s Exhibit C, Self’s Picks: 8 Bare-all
Essentials, Self, May 2000 (“The Pilates Studio® is loaded with all
things Pilates.”); Exhibit G, Wagner, Marsha, Pilates – a world famous
conditioning method now at BIG Arts, Islander, December 29, 2000-
January 4, 2001 (“The Pilates Studio opened in Fort Myers in the fall
of 1999….”); Exhibit P, Sitting, In Style, Summer 2000 (“…of New York
City’s Pilates Studio.”); and Exhibit T, Murray-Wilson, Exercise
Secrets of the Stars: The Pilates Method is Attracting People with
Disabilities, We Magazine, July August 2000).
Opposition No. 91154584
25
Nonetheless, “[a] generic term … can never be registered as
a trademark because such a term is "merely descriptive" within
the meaning of § 2(e)(1) and is incapable of acquiring de jure
distinctiveness under § 2(f).” See H. Marvin Ginn Corp., supra,
782 F.2d 987, 228 USPQ 528, 530. That is, “[o]nce determined to
be generic, no amount of purported evidence of secondary meaning
can serve to give legal protection to a generic term.” See 2
McCarthy on Trademarks and Unfair Competition §12:46 (4th ed.
March 2004). “Mere usage, advertising and repetition alone
cannot give trademark significance to a generic term.” Id.
Thus, notwithstanding applicant’s claim of acquired
distinctiveness based on its now cancelled Registration No.
1602929, applicant’s evidence of its long-standing use of the
term PILATES STUDIO, eleven declarations of customers,21 and
other evidence, if PILATES STUDIO is a generic term, it is not a
trademark, and cannot be registered.
After careful consideration of the arguments and evidentiary
submissions presented by each party,22 we find that opposer has
met its burden of establishing that no genuine issue of material
fact exists that the term PILATES STUDIO is generic for the
specified education and training services, as well as for
providing facilities for exercise, physical fitness conditioning
21 It is acknowledged that declarations are self-serving in nature.
See TBMP Section 528.05(b) (2nd ed. Rev. 1 March 2004). Being
cognizant of this, the Board comments in passing that it gave the
declarations submitted by both parties an appropriate probative weight
in view of the complete evidentiary record.
22 While each and every submission has not been discussed, we have
carefully considered the record presented.
Opposition No. 91154584
26
and physical rehabilitation and therapy. Opposer’s evidence
demonstrates that there are no genuine issues of material fact,
and that the relevant public perceives PILATES STUDIO as
referring to services providing Pilates exercise instruction and
providing facilities for exercise.
In coming to this conclusion, we have considered applicant’s
evidence of acquired distinctiveness and found it unpersuasive.
Applicant’s claim of acquired distinctiveness is based on its now
cancelled Registration No. 1602929, which was registered under
its own claim of acquired distinctiveness with a disclaimer of
the term STUDIO. Inasmuch as generic terms, and other
unregistrable matter, that are not part of a unitary term, are
disclaimed to permit registration on the Principal Register
(including registration under Section 2(f) of the Trademark Act),
applicant cannot rely on its now cancelled registration for
PILATES STUDIO, wherein STUDIO was disclaimed, as a basis for
acquired distinctiveness. See TMEP Sections 1212.02(e) and
1213.03(b) (3rd ed. Rev. 2 June 2002).
Inasmuch as there is no genuine issue of material fact that
PILATES STUDIO is generic for applicant’s identified services,
opposer’s motion for summary judgment in its favor on its claim
that PILATES STUDIO is generic is granted.
The opposition is hereby sustained on the ground that the
mark is generic and registration to applicant is refused.23
23 In light of our decision granting opposer's motion for summary
judgment on its claim that PILATES STUDIO is generic and, thus, not
registrable, we decline to consider opposer’s remaining claims.