Photo by Victor Freitas
History of CrossFit Trademarks
“CrossFit” is a type of high-intensity fitness training that many people don’t realize is also an extremely valuable trademark. At one point, the total revenue into CrossFit licensed gyms was over $4 billion annually, with the corporate licensor of the CrossFit brand earning over $100 million annually. At its core a pure licensing innovator, CrossFit HQ built its purse by requiring gyms, or “boxes,” to pay annual licensing fees for use of the word CrossFit, as well as certification fees for its instructors. Because a CrossFit gym could be launched with much less investment than a traditional brick and mortar, with part of the magic contributed by the social network of paying customers, the business model scaled quickly.
CrossFit, LLC (“CFHQ,” the holding entity for intellectual property)’s earliest trademark filings were around provision of fitness information and services.
CFHQ (also a trademark) has over the years expanded the trademark into a number of other categories, from apparel to meat (though I’m giving them the benefit of the doubt that the meat is not prepared in the same space as or while doing box jumps). Early attempts by others to trade off the popularity of CrossFit were quickly snuffed out. Filings such as CROSSFIT BELL for weights and CROSSFIT NUTRITION for supplements were expressly abandoned, likely as a result of cease and desist demands by CFHQ. Early monitoring and assertion of its trademarks, combined with its business model, created a valuable monopoly for CFHQ on the term that would eventually become synonymous with high-intensity training, or HIT. Gyms could offer similar training methods, but they couldn’t market their establishments as CrossFit gyms. Obviously, this is a very different outcome from, say, yoga, which anyone can market.
Toeing the Line: Protecting CrossFit from Genericide
Trademark protection is afforded to as a source identifier for specifically claimed goods and services. Conversely, trademark protection may be lost when a mark no longer identifies a specific good or service because the mark has become a ubiquitous name related to a good or service irrespective of the source. An example of a formerly protected mark which has since become generic is Bayer’s “ASPIRIN” trademark for “synthetic acetylsalicylic acid.” When you ask for a lightweight and soft but powerfully strong paper product, do you ask for a tissue or Kleenex? When you need a sticky piece of paper, do you go for a “sticky piece of paper” or a Post-It? Companies need their brands to be robust, but not so robust that their trademarks become fair game for everyone’s use.
So, what are some ways that we would help a company like CFHQ scale its brand short of genericide?
- Strict Brand Guidelines. If your business model is built on distributions, licenses, or partnerships, it’s critical to consistently spell out strategic guidelines for how your partners can and cannot use your brand marks.
- Enforcement, Enforcement, Enforcement. Have you ever thought to yourself, “Wow, the federal government does so much for me? I just can’t believe how efficient they are how much they’ve blessed me with through my $250 application fee.” Probably not. The trademark office gives you a piece of paper, it’s your job to origami that paper into a valuable asset. Setting up a robust online and PTO monitoring program, establishing workshops with the Customs Bureau, and registering with the Amazon Brand Protection program are just a few examples of how you can keep the public from diluting your marks.
Remember pilates? Pilates, Inc. spent considerable dollars securing their trademark in “Pilates”, sending out cease and desist letters to infringing individuals/companies, and permitting use of the trademarked name only through licenses. Despite all efforts, in 2000, the United States District Court in Manhattan wiped away trademark protection for “Pilates” and held it to be a “generic mode of exercise.” At Rockridge®, we help companies to launch and scale brand within the limits of trademark law.
Read more Rockridge® insights on Trademarks here.
About Micah Gonzalez, CIPP
Micah Gonzalez, CIPP, is a brand and data privacy attorney at Rockridge®, a Certified B Corp and RealLeaders Top 150 global impact company. Micah is a former collegiate volleyball player and began her career with Rockridge as an NIL Fellow. She previously worked for the Nashville Predators, and helps athletes, entertainers, and influencers monetize their rights, and helps companies and organizations build brand pipelines. As a Certified Intellectual Privacy Professional under the IAPP, Micah helps e-commerce, health, and technology companies properly manage customer data and build strategies for asset development stemming from proprietary data sets.
Micah’s practice areas include:
- athlete and entertainer rights;
- brand law, including copyright and trademark practice;
- data privacy; and,
- social enterprise, ESG, and B Corps.
Contact
Email Micah G directly at micah@rockridgelaw.com.
