When a "+" Doesn't Add Anything in the Equation: Analyzing the Effect of the "+" on Trademark Law

• Publication year: 2022

When a "+" Doesn't Add Anything in the Equation: Analyzing the Effect of the "+" on Trademark Law

Vasilios Nasoulis
University of Georgia School of Law

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WHEN A "+" DOESN'T ADD ANYTHING IN THE EQUATION: ANALYZING THE EFFECT OF THE "+" ON TRADEMARK LAW

Vasilios Nasoulis^*

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TABLE OF CONTENTS

I. Introduction...........................................................................................346

II. Background.............................................................................................347

A. Trademark Law and Disttnctiveness....................................347
B. Role of Patent and Trademark Office Examining Attorney...........................................................................................351
C. Ways of Showing There is Secondary Meaning...............351
D. Case Law Examining Genericness..........................................352

1. Goodyear's Rubber Manufacturing Co. v. Goodyear Rubber Co........352
2. In Re Hotels.com..............................................................................353
3. In re 1800Mattress.com IP, LLC....................................................353
4. Advertise.com, Inc. v. AOL Advertising, Inc....................................354
5. United States Patent and Trademark Office v. Booking.com.............355

E. Public Perception of the +.......................................................357
F. World Champ Tech's Mobile App.............................................358

III. Analysis......................................................................................................359

A. Analogizing "+" and ".com".....................................................359

1. Putting "Bike" on the Spectrum of Distinctiveness...............360
2. Looking at the + by Itself...........................................................363

B. Analyzing "Bike+" as a Whole................................................364
C. What Should Have Happened with the Application.....365
D. Policy Rationale for Denying "Bike+" as a Registered Mark....................................................................................................367
E. Possible Solutions........................................................................368

1. Peloton Can Make an Incontestability Argument...................368
2. WCT Can Try to Show Secondary Meaning...........................368

IV. Conclusion................................................................................................369

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I. INTRODUCTION

An emerging issue in trademark law was brought up in a case when World Champ Tech (WCT) alleged that Peloton Interactive, Inc. (Peloton) infringed on their registered trademark "Bike+".¹ The case was filed on April 30, 2021, in the U.S. District Court, Northern District of California.² WCT is a company that focuses on developing "the world's best workout apps."³ WCT developed the app, Bike+, as a way to record and manage a cyclist's progress and activities; they filed for a trademark registration of Bike+ in November of 2013.⁴ The United States Patent and Trademark Office (PTO) officially registered the mark in the principle register on July 28, 2015, and WCT has been using the mark ever since.⁵

Peloton was founded in 2012 and it wanted to "bring the community and excitement of boutique fitness into the home."⁶ Peloton became popular for their indoor stationary bicycles.⁷ In September 2020, Peloton launched a new model of its stationary bikes called "Bike+."⁸ Peloton's use of Bike+ refers to the bike model itself, but WCT notes that Peloton's Bike+ has an interactive screen that can be used to access Peloton's fitness apps.⁹ These apps are able to record data similarly to WCT's Bike+ app.¹⁰ Peloton's use and promotion of the term Bike+, in relation to their new bike model, has led to the current trademark infringement claim.¹¹

Peloton should never have been sued because there should never have been a trademark infringement case to begin with. WCT should not have been able to register "Bike+". The PTO erred by granting the registration. The term "Bike+" should not be a protectable mark under trademark law. To correct this issue,

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Peloton should petition to cancel the trademark, a process Peloton has relied on in past disputes.¹²

This Note will begin by discussing the characteristics of a trademark and the categories of distinctiveness that are used to classify marks. Part II will then discuss relevant case law that can be analogized to the current issue. There will also be a discussion of the appropriate steps the PTO must take when responding to an application for registration and possible solutions to the current issue.

Part III will focus on where "Bike+" falls on the distinctiveness spectrum. Whether or not the PTO made an error depends on where "Bike+" falls on the spectrum. This Note will conclude by determining that the PTO did err by granting the registration because "Bike+" is not inherently distinctive and WCT has not proven secondary meaning.

II. BACKGROUND

A. TRADEMARK LAW AND DISTINCTIVENESS

A trademark, as defined in the Lanham Act of 1946, is "any word, name, symbol, or device, or any combination thereof" that is "used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods."¹³ People or companies can become trademark owners as soon as they start using the mark with specific goods or services.¹⁴ Registering a trademark on the Principal Register with the United States Patent and Trademark Office (PTO) is optional, but registering does come with broader rights and protections for the owner than unregistered marks.¹⁵ To qualify for registration, a trademark must fall into a certain protectable category.¹⁶

For a trademark to be registered with the PTO and gain the protections, the mark must be considered distinctive.¹⁷ "Distinctive" is a term of art under trademark law and is the defining characteristic of a valid trademark; a designation cannot be considered a mark unless it has distinctiveness.¹⁸ Section

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2 of the Lanham Act states that "[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register."¹⁹

The strength of a trademark is sorted into four different categories: 1) generic, 2) descriptive, 3) suggestive, and 4) fanciful or arbitrary.²⁰ Fanciful, arbitrary, and suggestive designations are all considered inherently distinctive and are automatically considered valid marks.²¹ Descriptive designations are not inherently distinctive, but they can still be protected as registered trademarks if the owner is able to prove that consumers associate the designation with the owner's product or service.²² This proof shows that the mark has "secondary meaning."²³ Descriptive designations that do not have secondary meaning, as well as generic designations, can never be trademarks.²⁴

Fanciful or arbitrary trademarks are the strongest marks.²⁵ Fanciful marks are entirely made-up terms that the trademark owner created to describe their product or service; these include Pepsi®, relating to soft drinks,²⁶ or Google®, relating to online services.²⁷ These marks have the greatest amount of protection because they require a larger and more expensive effort to educate the public on what this new word refers to.²⁸

Arbitrary marks are in the same category as fanciful marks and also receive the highest amount of protection.²⁹ Arbitrary trademarks are words that have common meanings, but that word is unrelated to the product or service that the mark is used for.³⁰ Apple® for computers is a famous example of an arbitrary mark because the term "apple" is a common word for a fruit, but relating to computers, the mark is unique.³¹

Suggestive marks are the second strongest type of trademark.³² These marks suggest a quality of the goods or services being provided without openly stating

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the quality.³³ Examples of suggestive marks include Coppertone®, which describes a suntanning oil that will make your skin a copper color³⁴ , and Airbus®, which describes an airplane used for transport.³⁵

Descriptive marks are not inherently distinctive but can acquire distinctiveness through secondary meaning.³⁶ Descriptive marks do as they suggest and only describe the product they are associated with.³⁷ According to the United States Court of Customs and Patent Appeals, "[a] mark is merely descriptive if it immediately conveys to one seeing or hearing it knowledge of the ingredients, qualities, or characteristics of the goods or services with which it is used."³⁸ To be a registered trademark, the mark must have secondary meaning.³⁹ Examples of descriptive marks that have secondary meaning, and are registered trademarks, are Sharp® for televisions and Holiday Inn® for hotel services.⁴⁰

Generic terms are words that the general public thinks of as the common name for a good or the genus of the product.⁴¹ These terms can never be protected as trademarks.⁴² Generic terms cannot be registered as trademarks because they do not serve the function of distinguishing one producer's goods from another.⁴³ Another way to determine if a mark is generic is to look at how the proponent of the trademark uses the term.⁴⁴

If companies were allowed to register generic terms, other competitors would have a difficult time entering that market; they would have trouble conveying what their product is to the consumers.⁴⁵ An example would be if a company was able to register the term "pen" for their product, a pen. Their competitors would have trouble selling their pens because they would not be able to market them as pens; they would need to describe the product with longer, more convoluted titles.⁴⁶

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With classifications of marks, it is important for lawyers and courts to draw the line between a...