Court Battle over Pilates Trademark – USA
On October 19, 2000, the Pilates trademark was proclaimed invalid in the USA, when The US Patent and Trademark Office cancelled the heretofore-valid trademark.
This decision was preceded by a four-year long legal battle between Sean Gallagher, owner of a Pilates studio in Manhattan, and Ken Endelman of Balanced Body Inc., the world’s largest manufacturer of Pilates equipment. Crucial in the decision was its ruling that Pilates is a generic term identified by the public with an exercise method. As such, it cannot be monopolized; trademarks protect only product and service brands.
History of the Pilates Trademark
Joseph Pilates promoted his exercise method throughout his life, and sought to disseminate it among the wider public. He never tried to do anything to prevent the use of the name for what he was teaching. As the author of the method, J. Pilates certified only two instructors during his lifetime for instructional purposes - Kathy Grant and Lolita San Miguel. K. Grant taught Pilates in the 1960s, and from 1970 to 1978 owned a Pilates studio. She taught “hundreds of students” while teaching Pilates at New York University. Among J. Pilates other direct students belong, for example, Romana Kryzanowska, Ron Fletcher, Carola Trier or Eve Gentry, all of whom founded their careers on the teaching of this exercise method.
During the 1980s, The US Patent and Trademark Office registered the names “Pilates Studio” and “Pilates,” but as brands for exercise services, not for a method of exercise. The beginnings of the “Pilates Studio” chain date back to 1982, when it was led by R. Kryzanowska. The Studio changed owners several times until it was brought to extinction in 1989 by the Healite company.
Sean Gallagher acquired Pilates Studio from Healite in 1992, and with it also the rights to its exercise and instructor services. Very soon after acquiring Pilates Studio, Gallagher embarked on a campaign against other Pilates instructors. The aim of Gallagher’s effort was to prove that he was the only one with the right to use the name “Pilates". He falsely identified R. Kryzanowska as the only rightful successor of J. Pilates, and claimed that through Kryzanowska and “Pilates Studio” this right had been transferred to him.
For a period of four years, S. Gallagher barraged the US courts with his law suits against other Pilates instructors. A crucial turn occurred in 1996, when Balanced Body president Ken Endelman stood up to Gallagher. As the world’s largest manufacturer of Pilates exercise equipment, Balanced Body also supplied this equipment to Gallagher’s studios, so that Gallagher and Endelman had a business relationship. Soon, however, a conflict of interests materialized, and Gallagher demanded that Balanced Body either pay his company a large part of their profit, or cease using the name “Pilates". Balanced Body refused to satisfy this demand, and Gallagher took them to court for it. As opposed to the Pilates instructors themselves, Balanced Body not only had a good reason, but also the finances sufficient to engage in a legal battle lasting for several years, which finally resulted in the ruling cancelling the “Pilates” trademark.
Reasons Leading to the Court Decision
A fundamental principle of trademark protection law is that a brand cannot by protected if in the course of time it becomes generic. “Generic” means that a name does not signify a brand, but is a synonym for the thing itself.
The court found support for finding the brand “Pilates” a generic term in the dictionary, in newspapers, in magazines, books, and even television programs. The same generic use was evident in the testimonies of Kryzanowska, Grant, Fletcher, and other instructors. Even Gallagher’s own lawyers were unable to avoid using the generic usage of this word, and if so, then only with the help of clumsy formulations. The court therefore declared: “The plaintiff cannot monopolize an exercise method by registering a part of a generic term which describes this method.”
The generic character of the term was not the only reason for the court’s decision to annul the the protected trademarks of “Pilates” and “Pilates Studio". According to the law, a protected trademark value depends on the good will, connected with the brand name.
When Gallagher bought from Healite - along with the “Pilates Studio” trademark - the exercise and instructor services connected with the studio, Healite hadn’t been actively engaged in the business for three years. Thus there was no good will connected with the trademark. Gallagher testified in court that he was only interested in acquiring Healite’s trademarks, not in continuing in Healite’s activities. This is corroborated by his behavior after he bought the trademarks. He threw out 80 % of the materials he received, including client lists that dated back to the time when J. Pilates himself was teaching.
The court was also influenced by the fact that until 1996 (when the legal fight began), neither Gallagher nor his predecessors tried to prevent Balanced body from using the word “Pilates” for the promotion of its exercise equipment. If Gallagher were in fact to sue everyone using the Pilates name, he would not have been able to equip his own studios, because he himself was not a manufacturer of Pilates equipment.
In addition, the court found that Gallagher had committed fraud when he testified that along with with the “Pilates Studio” trademark for exercise and instructor services, he also took over from Healite the trademark for Pilates equipment. This could not have happened, because Healite had never owned such a trademark.
Victory not only for Balanced Body
Ken Endelman achieved a victory not only for his own company, but for thousands of Pilates instructors and the public as well. Endelman said: “The public benefits from this decision, because now it will be easier to locate studios which, until now, have been prevented from saying that they teach Pilates. This decision gives the public greater access to Pilates.”
You can find more information about this legal fight at www.pilates.com