Court overturns Pilates Trademarks
By Lawrence Stanley, Esq.
What’s in a name? Plenty, especially if the name is “Pilates,” one of the hottest fitness trends in America. An October 2000 decision in Manhattan’s federal court declared that Pilates, like yoga and karate, is an exercise method and not a trademark. The decision affected thousands of Pilates instructors who had been prevented from saying that they taught Pilates. “Imagine if you were a yoga teacher, and couldn‘t say ‘yoga’ – you were forced to describe it in some other way,” said Marie José Blom-Lawrence, a Pilates instructor since 1980. “Pilates instructors were in the same boat.”
The four-year case pitted Sean Gallagher, owner of the Manhattan-based Pilates Studio, against Ken Endelman and Balanced Body Inc., the world‘s largest manufacturer of Pilates equipment. On October 19, 2000, U.S. District Court Judge Miriam Cedarbaum ruled that the Pilates trademarks were invalid. She directed the United States Patent and Trademark Office to cancel the marks immediately.
Pilates ruled “generic”
The Court‘s 93-page opinion, which invalidated Gallagher’s trademarks for Pilates exercise services and Pilates equipment, found that Pilates is a generic term. Since “consumers identify the word ‘Pilates’ as a particular method of exercise,” the Court found, “plaintiff cannot monopolize [it].” Gallagher was also found to have “deliberately attempted to mislead” the United States Patent and Trademark office by falsely claiming in sworn documents that he had manufactured Pilates equipment.
Many qualified Pilates teachers in the U.S.
The Court rejected Gallagher’s argument that only his teachers were qualified to teach the Pilates method, citing testimony from Gallagher’s own witnesses that there were many other qualified Pilates instructors in the United States. Some of those teachers, including trial witnesses Kathy Grant and Ron Fletcher, had studied decades ago with Joseph Pilates, the founder of the Pilates method. The court noted that during his lifetime, Joseph Pilates had “promoted his method of exercises and attempted to increase its use by the public” and “never did anything to prevent others from using the name to describe what they taught.”
Trademarks protect brand names, not exercise methods
During the trial, Romana Kryzanowska, who also studied with Joseph Pilates, was asked what she did for a living. “I teach Pilates,” she replied. That statement proved fatal to the Pilates trademarks. Trademarks don’t cover exercise methods – they can only protect brand names of goods and services.
Over the years, Kryzanowska taught many students who went on to become Pilates teachers. Like Kathy Grant and Ron Fletcher, as well as other Pilates protégés including Carola Trier and Eve Gentry, Kryzanowska made a career of teaching and training others in Pilates’ method. From all these “first generation” teachers, a second generation arose, then a third, creating a geometric increase in the numbers of Pilates teachers and practitioners.
1992: Gallagher brings first court actions against Pilates instructors
Nonetheless, beginning shortly after he acquired the Pilates Studio and exercise instruction service marks in August 1992, Sean Gallagher began taking legal action against Pilates instructors, claiming that he alone had the right to use “Pilates.” Gallagher claimed that the right came to him through Kryzanowska, whom Gallagher falsely presented to the public as having been “hand-picked” by Joe Pilates to be his successor. Other teachers taught by Joe, according to Gallagher, were imposters, teaching something that could not properly be called “Pilates.” Through this strategy Gallagher intimidated hundreds of Pilates teachers into using the “P” word only behind closed studio doors or after paying yearly fees to him.
Strengthening Gallagher’s claim was the fact that his trademarks for “Pilates Studio” and “Pilates” (as the brand name for exercise instruction services, not a method of exercise) had been registered with the United States Patent & Trademark Office (PTO) in the 1980s. There was thus a chain of title beginning about 1982 from the Pilates Studio, then run by Kryzanowska, to Aris-Isotoner in the mid-80s, to Healite, which ran the Pilates Studio into the ground in 1989. The color of the law, combined with Gallagher’s money, provided ample reason for many Pilates teachers – whose salaries could not possibly sustain a litigation – to capitulate to Gallagher’s demands.
1996: Gallagher sues Balanced Body®
Gallagher met his match with Ken Endelman, CEO of Balanced Body. “The idea that Gallagher owned ‘Pilates’ and that longtime teachers couldn’t use it was ludicrous,” Endelman said. “The entire industry was being stifled, and the public was getting the short end of the stick. Someone had to stand up to this guy.”
Endelman and Gallagher maintained a business relationship for a time after Gallagher acquired the trademarks in 1992. Balanced Body (formerly Current Concepts) manufactured Pilates equipment for Gallagher’s affiliated studios and included Gallaghers’ studios in cooperative advertisements along with Balanced Body customers. But Gallagher and Balanced Body soon clashed over the right to use Pilates’ surname. In 1996, Balanced Body refused to accede to Gallagher’s demand either to pay a large portion of its profits to Gallagher‘s company or to stop using the surname. Gallagher filed suit. After four years of litigation and an eleven-day trial, the United States District Court taught Gallagher what most Pilates teachers knew but could not afford to prove: Pilates is the name of a method of exercise and cannot be owned.
The definition of “generic” in trademark law
It is a cornerstone of trademark law that a trademark which is, or has become, “generic” is not entitled to trademark protection. “Generic” means that the name no longer indicates a brand, but is synonymous with the thing itself.
“Aspirin” was once a trademark for a brand of acetylsalicylic acid, but through consumer and trade use, it became generic. “Pampers,” on the other hand, is a trademark for a particular brand of disposable diapers. If “Pilates” is used as the name of the thing that is being taught, the Court reasoned, then it cannot distinguish Sean Gallagher’s exercise instruction services from Kathy Grant’s or any other of the many Pilates teachers in the United States.
Widespread evidence of generic use
In finding that “Pilates” is generic – i.e., the name of an exercise method rather than Gallagher’s brand name – the Court looked to the widespread evidence presented by Balanced Body at trial. This included a dictionary definition that Pilates was a method of exercise, hundreds of newspapers, magazines, books, and television programs in which “Pilates” was identified as a method of exercise, and generic uses of the word by Kryzanowska, Grant, Fletcher and a host of other Pilates instructors.
That Gallagher and his predecessors never attempted to stop Kathy Grant from using the name “Pilates” to describe what she taught since the 1960s also persuaded the Court that “Pilates” is generic. Grant was one of only two teachers to have been certified to teach Pilates by Joe Pilates himself. (The other is Lolita San Miguel.) Grant operated the Pilates Studio at Bendel’s from 1970 until 1988 and then taught Pilates at New York University to “hundreds of students.” Given this history, Gallagher and his predecessors knew that, morally and legally, they could not prevent Grant from calling herself a Pilates teacher.
The Court was also swayed by the fact that Gallagher and his predecessors never attempted to stop Balanced Body’s competitors from using “Pilates” to promote their exercise equipment. Had Gallagher sued everyone, he would have been unable to outfit his affiliated studios because he never manufactured Pilates equipment himself.
Also compelling was the fact that Gallagher and his lawyers frequently used “Pilates” generically throughout the trial. Efforts by Gallagher and his lawyers to avoid using the ‘P’ word in a generic sense, the Court dryly observed, resulted “in cumbersome expressions such as ‘exercises based on the teachings and methods of Joseph H. Pilates.'”
Invalid transfer of Pilates exercise services trademarks
Generic-ness wasn’t the only reason the judge cancelled the Pilates trademarks. Under trademark law, a trademark is only worth the “good will” that goes along with it. As the Court explained, “‘good will’ is the value attributable to a going concern apart from its physical assets – the intangible worth of buyer momentum emanating from the reputation and integrity earned by the company. A trademark or service mark is merely the symbol by which the public recognizes that reputation.” Hence it has no independent significance apart from the owner’s good will. A trademark owner may not assign the rights to a mark divorced from the good will connected to the mark.
When Gallagher purchased the exercise instruction services and Pilates Studio marks from Healite, Healite had been out of business for three years. Because there was no ongoing business, any good will that the marks may have had no longer existed. Gallagher testified at trial that he was only interested in obtaining the marks, not Healite’s good will or business. Before he purchased the marks he ran a Pilates business with total disregard for Healite’s trademarks. After he purchased the marks, he threw away about eighty percent of what he received, including client lists going back to the days of Joseph Pilates. As Healite’s owner testified, “Sean Gallagher had his own business plan. He just wanted the trademark and our assets, which was the trademark.” Consequently the Court ruled that the exercise instruction services mark would be cancelled on the additional ground of invalid transfer.
Gallagher guilty of fraud in registration of equipment mark
On the Pilates equipment mark, the Court found Healite guilty of abandonment and Gallagher guilty of fraud. Although Gallagher told the PTO otherwise, he never acquired an equipment trademark from Healite. The agreement between Healite and Gallagher specifically stated that Healite owned no marks other than the Pilates Studio and exercise instruction services marks. Nor did Healite or its predecessors use a Pilates trademark in connection with equipment. Because the party who fails to use or assert a trademark right is held to have abandoned that right, the Court properly found that if Healite had any right to an equipment trademark, the right was abandoned well before the 1992 transfer to Gallagher.
Despite the fact that Gallagher had not obtained an equipment trademark from Healite, he advised the PTO in 1993 that one had been transferred to him and that it had been in use continuously. As evidence of current use, Gallagher provided the PTO with copies of plaques that Joseph Pilates had used more than 25 years earlier to indicate his ownership of certain equipment patents. (The patents are long expired.) Gallagher knew that the plaques had not been used in any manner in the five years preceding his application, just as he knew that his written submissions contained deliberate lies intended to mislead the PTO into registering the equipment mark
The Court found Gallagher guilty of fraud.
A victory for the Pilates community and the public
Ken Endelman claimed victory not only for his company, but also for thousands of Pilates instructors and the public. “The public benefits from this decision,” Endelman said, “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.” Endelman also stressed the grass-roots nature of the battle. “Pilates studios and instructors all over the country worked very hard to help us win this fight,” he stated. “Deborah Lessen’s Greene Street Studio was the first studio to take a stand against Sean. Her work in galvanizing the Pilates community was invaluable to the success of the case.”
Balanced Body’s competitors – nearly a dozen in the United States alone – have also won the right to use “Pilates” to describe the equipment they manufacture and sell. Several generations of teachers who have been teaching and refining the Pilates method for the decades since Joe’s passing will also benefit. Now they can improve the quality of their own services as they see fit, without paying tribute to Gallagher. Certification organizations can train teachers without threat of legal action.
When Joseph Pilates died in 1967, his method was barely known beyond the elite group of dancers, actors, and wealthy clients who trained at his studio. Joe believed passionately in his work and wanted every school and gym to teach it. He dreamed of a day when “Pilates” would become a household word. “I am fifty years ahead of my time,” he once said. He was right. Today, more than ten million Americans practice Pilates, and the numbers are growing exponentially. With the Pilates name free from trademark restrictions, Joseph Pilates’ dream may yet become a reality.
Both the District Court and TTAB decisions can be found here.