Generic Trademarks – The Story of Joseph Pilates and Generic Trademarks
Joseph Pilates migrated to the United States in 1925 and opened his first Pilates studio in New York City with his wife Clara thereafter. A sickly child, Joseph was constantly trying to improve his physical well-being. He studied yoga, gymnastics, and body-building, until he eventually developed his own form of exercise – called, fittingly, Pilates.
The term “Pilates” is a good example of a generic trademark. A generic trademark is a term which has become part of the common vernacular – in other words, the term specifically describes a particular product or service; it does not act as a source identifier. Had Joseph Pilates trademarked the term “Pilates” for his form of exercise and done everything necessary in terms of policing and renewals in the years thereafter, he would have likely received and maintained federal registration of his trademark. However, unfortunately for Joseph Pilates, that was not the case.
Pilates didn’t take off quickly in New York City. A few famous New York dancers began frequenting Joseph’s studio and would refer other members of their dance troupe to train in Pilates – but Pilates didn’t go mainstream. Joseph moved his studio to a few different locations in New York City until eventually selling the company (which was then transferred between a few more parties.)
Eventually Pilates hit the mainstream – but the term “Pilates” was no longer able to be trademarked. In October of 2000 a federal court in the Southern District of New York made a final ruling that the term “Pilates” was generic. It was deemed generic because everyone associated it with the form of exercise in general; it would be akin to attempting to register ‘jumping jacks’ for an exercise program which revolved solely around doing jumping jacks. Now, if someone wants to register a trademark which contains the word ‘Pilates’, they must include at least one other term which is distinct enough to be able to justify a trademark registration.
As a business owner, it is critical to apply for and register your trademark early. It is also critical to ensure that your trademark does not become a part of the general vernacular. When the trademark is used it should always be used to identify your products or services.