Trademarks That Become Generic

Author:Mr Miguel Bibe
Profession:Inventa International

Is the CrossFit trademark "too big"?

This new dynamic that revolutionized indoor physical training, created in 2000 by Greg Glassman, consists in a physical training methodology focused on the development of general physical skills, from a dynamic and functional training. Through this new method, practitioners through WOD'S (work of the day) constantly challenge their physical and mental endurance.

Observing the exponential growth, according to the number of affiliates, it is possible to notice that CrossFit is increasing the number of practitioners, with thousands of affiliates spread all over the continents.

However, it is not so well-known that the name of this training method is registered as a trademark practically all over the world, in which, if a possible interested party intends to open a public space and use the designation "CrossFit" in order to attract customers that seek to train according to this philosophy, is subject to a license granting by the "CrossFit" trademark owners, in which one of the conditions is an annual payment of a quote corresponding to 3,000 USD.

Looking at the growing number of affiliates, it is possible to conclude that the "CrossFit" trademark has become a well-known trademark, with a worldwide reputation. However, in parallel with the continuing trademark license globalization, the globalization of several BOXS (a term adopted by the CROSSFIT practice spaces) that usethe CrossFit trademark name and which adopted this train philosophy without asking permission or paying the license to the CrossFit trademark owners arised.

While no specific litigation situation has yet emerged, it should be examined whether an interested third party may use the designation "CrossFit" to identify goods or services related with physical training without the permission and the license of the "CrossFit" trademark owners.

In light of the above, arises the question of trademarks that become generic, meaning that trademarks whose associated goods or services reach a level of notoriety so high that in common language these goods or services begin to be designated by the trademark name, lose its distinctiveness (essential requirement for trademark protection),become generic and, consequently, lose the exclusivity ownership and fall into the public domain.

Although the "genericity" examination (process of a trademark becoming generic) has to be taken with due caution and at territorial level, there are numerous cases where...

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