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Trademark Advice.

by Midas3 Consulting
13 replies
BEACHBODY | Free Online Trademark Search | Trademark by Product Partners, LLC

Can anybody in the know (not guesses) explain to me how they
managed this.

Does this actually mean that if somebody uses a universal
phrase such as "beach body", that these guys have recourse
against you ?

I had no idea a term so utterly generic could "belong" to
somebody.

Does this mean I could trademark the term "jazz singer" or....

Seems like madness..

Advice appreciated please.
#advice #trademark
  • Profile picture of the author Bill Farnham
    Hi Simon,

    As someone who holds 4 US Patents I know a little bit about this subject...(just a little )

    Here's my take on this...

    This company has been granted a Trademark for the word Beachbody. One word, not the phrase "beach body". Huge difference.

    Additionally, the Trademark is limited to the catagory described below. Nothing more. The term "Beachbody" is wide open for almost any other field, providing it does not cause confusion in consumers minds.

    So anyone could still use that term in other fields provided they do not encroach on the fields listed below.

    Ford could create a SUV designed to carry surfboards and call it "Beachbody" if they wanted to, provided they did not market it in such a way that there would be confusion in consumers minds. If some of the options that came with the car included exercise equipment they may have a problem.

    Do you want to really have your mind blown? Look up the Trademark for "Burn the Fat". Yup, a company was granted the Trademark for that phrase.

    ~Bill


    The BEACHBODY trademark is filed in the category of Toys and Sporting Goods Products . The description provided to the USPTO for BEACHBODY is Exercise equipment, namely, machines, chin-up bars, benches, trampolines, chest pulls, chest expanders, abdominal boards, rowing machines, weights, bars, stretch bands, pulleys, work out weighted gloves, pushup stands, power stands in the nature of exercise platforms, exercise balls, medicine balls, personal exercise mats, yoga blocks.
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    • Profile picture of the author BrianMcLeod
      Originally Posted by Bill Farnham View Post

      As someone who holds 4 US Patents I know a little bit about this subject...(just a little )
      I was hoping you'd chime in here, Bill.

      I started to reply but got an incoming email.

      Checked back and here you were!

      We need to get on the horn again soon.

      Best,

      Brian
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      Brian McLeod
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    • Profile picture of the author Ron Killian
      Originally Posted by Bill Farnham View Post

      Hi Simon,

      As someone who holds 4 US Patents I know a little bit about this subject...(just a little )

      Here's my take on this...

      This company has been granted a Trademark for the word Beachbody. One word, not the phrase "beach body". Huge difference.

      Additionally, the Trademark is limited to the catagory described below. Nothing more. The term "Beachbody" is wide open for almost any other field, providing it does not cause confusion in consumers minds.

      So anyone could still use that term in other fields provided they do not encroach on the fields listed below.

      Ford could create a SUV designed to carry surfboards and call it "Beachbody" if they wanted to, provided they did not market it in such a way that there would be confusion in consumers minds. If some of the options that came with the car included exercise equipment they may have a problem.

      Do you want to really have your mind blown? Look up the Trademark for "Burn the Fat". Yup, a company was granted the Trademark for that phrase.

      ~Bill


      The BEACHBODY trademark is filed in the category of Toys and Sporting Goods Products . The description provided to the USPTO for BEACHBODY is Exercise equipment, namely, machines, chin-up bars, benches, trampolines, chest pulls, chest expanders, abdominal boards, rowing machines, weights, bars, stretch bands, pulleys, work out weighted gloves, pushup stands, power stands in the nature of exercise platforms, exercise balls, medicine balls, personal exercise mats, yoga blocks.
      I am the last one to drag up an old thread, but there is a update to this story.

      Unbelievably, this company IS contacting people using "beach body" as separate words, saying it infringes on their trademark. And it's not a fitness equipment product, it is for a digital weight loss product.

      I am all for protecting ones trademark or copyright, 100%, but this seems to be extreme over-reaching and smacking on attempted legal bullying.

      Any one else get contacted?
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      • Profile picture of the author davezan
        "Word Mark BEACHBODY
        Goods and Services IC 044. US 100 101. G & S: online diet and support services, namely, dietary and nutritional guidance and weight reduction diet planning and supervision. FIRST USE: 19990510. FIRST USE IN COMMERCE: 19990510

        Standard Characters Claimed
        Mark Drawing Code (4) STANDARD CHARACTER MARK
        Serial Number 77265117
        Filing Date August 27, 2007
        Current Basis 1A
        Original Filing Basis 1B
        Published for Opposition January 22, 2008
        Registration Number 3450708
        Registration Date June 17, 2008
        Owner (REGISTRANT) Product Partners, LLC LIMITED LIABILITY COMPANY CALIFORNIA 3301 Exposition Boulevard 3rd Floor Santa Monica CALIFORNIA 90404
        (LAST LISTED OWNER) BEACHBODY, LLC LIMITED LIABILITY COMPANY CALIFORNIA 3301 EXPOSITION BOULEVARD THIRD FLOOR SANTA MONICA CALIFORNIA 90404

        Assignment Recorded ASSIGNMENT RECORDED
        Attorney of Record Camille M. Miller
        Prior Registrations 2862904;3041368;3078168;AND OTHERS
        Type of Mark SERVICE MARK
        Register PRINCIPAL
        Live/Dead Indicator LIVE"
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        David

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  • Profile picture of the author Midas3 Consulting
    Thanks Bill, ok next question then.

    When you create a domain, you have no choice but to have words connected to each other.

    So for example if I wanted to register.

    www.beachbodyfitness.com, it would contain the word "beachbody"

    Am I then infringing ?
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    • Profile picture of the author BrianMcLeod
      Originally Posted by SimonHarrison View Post

      Thanks Bill, ok next question then.

      When you create a domain, you have no choice but to have words connected to each other.

      So for example if I wanted to register.

      www.beachbodyfitness.com, it would contain the word "beachbody"

      Am I then infringing ?
      You're asking a very specific legal question that is squarely
      in the domain of a qualified patent attorney, Simon.

      Could they be a pain in the ass about it? Yes.

      Could they win an infringement suit? Maybe, maybe not.

      It's a pretty weak mark due to the non-distinctive nature of the words "beach body". Adding fitness into the mix does substantially increase the possibility of confusion in the mind of the consumer which is what trademark protection is based upon.

      They've spent at minimum a few hundred to a thousand or two registering their mark.

      Whether or not they intend to vigorously defend it in any iteration on the web is anybody's guess.

      Do you want to gamble with that?

      It's a question that only you can answer.

      Best,

      Brian
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      Brian McLeod
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      • Profile picture of the author Midas3 Consulting
        Originally Posted by BrianMcLeod View Post

        You're asking a very specific legal question that is squarely
        in the domain of a qualified patent attorney, Simon.

        Could they be a pain in the ass about it? Yes.

        Could they win an infringement suit? Maybe, maybe not.

        It's a pretty weak mark due to the non-distinctive nature of the words "beach body". Adding fitness into the mix does substantially increase the possibility of confusion in the mind of the consumer which is what trademark protection is based upon.

        They've spent at minimum a few hundred to a thousand or two registering their mark.

        Whether or not they intend to vigorously defend it in any iteration on the web is anybody's guess.

        Do you want to gamble with that?

        It's a question that only you can answer.

        Best,

        Brian
        Hi Brian

        I don't obviously want that domain , but we do have a product we want to run with that contains the phrase Beach Body.

        It has nothing to do with exercise equipment or supplements etc that these guys sell so we could presumably trademark it under an entirely different category.

        The product name is 4 words in total of which beach body would be two of them.

        It's a pain if we can't use it, I only just realized an hour ago that they term was trademarked , didn't even occur to me.

        Question.

        If a Mr Jim Subway, registered jimsubway.com and sold sandwiches from it, could Subway sue him ?

        I'll go speak to a professional If I have to but I generally find there's a pro hanging around o n the WF in every area...
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        • Profile picture of the author BrianMcLeod
          Originally Posted by SimonHarrison View Post

          Question.

          If a Mr Jim Subway, registered jimsubway.com and sold sandwiches from it, could Subway sue him ?
          CAN they? Sure. Would they? Probably not.

          Anybody can sue anybody. The likelihood of Subway suing Jim Subway for promoting his sandwich shop is pretty slim. But sure, it's possible.

          If somebody wants to pony up the $1,500 or so to file for ICANN arbitration and try to take the domain, they can.

          The thing to remember is that it's incumbent upon the trademark holder to assert their rights or lose them. In some ways, a trademark holder HAS to be kind of a dick about infringement because of the way the rules work.

          We're getting into a legal issue that I'm not qualified to speak on with any kind of authority - I'm not a lawyer - but suffice it to say that I spent a good decade in the business of intellectual property.

          Worked with patent attorneys every day and registered a good many trade and service marks for ourselves and on behalf of others.

          Defended against infringement claims, ourselves and on behalf of others.

          In many ways it's simple - but in others, some very important, it's quite complicated.

          I'll go speak to a professional If I have to but I generally find there's a pro hanging around o n the WF in every area...
          Call up a local patent attorney - chances are pretty good you'll be able to ask him/her some direct questions and get some direct answers that will give you a lot more peace of mind than some knucklehead like ME.

          : )

          Best,

          Brian
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          Brian McLeod
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        • Profile picture of the author Bill Farnham
          Originally Posted by BrianMcLeod View Post

          You're asking a very specific legal question that is squarely
          in the domain of a qualified patent attorney, Simon.

          Could they be a pain in the ass about it? Yes.

          Could they win an infringement suit? Maybe, maybe not.

          It's a pretty weak mark due to the non-distinctive nature of the words "beach body". Adding fitness into the mix does substantially increase the possibility of confusion in the mind of the consumer which is what trademark protection is based upon.

          They've spent at minimum a few hundred to a thousand or two registering their mark.

          Whether or not they intend to vigorously defend it in any iteration on the web is anybody's guess.

          Do you want to gamble with that?

          It's a question that only you can answer.

          Best,

          Brian
          Hi Brian,

          It's good to see you in this thread, as well. Great answer, and for those of you who are not aware, Brian is highly versed on this subject.


          Originally Posted by SimonHarrison View Post

          Hi Brian

          I don't obviously want that domain , but we do have a product we want to run with that contains the phrase Beach Body.

          It has nothing to do with exercise equipment or supplements etc that these guys sell so we could presumably trademark it under an entirely different category.

          The product name is 4 words in total of which beach body would be two of them.

          It's a pain if we can't use it, I only just realized an hour ago that they term was trademarked , didn't even occur to me.

          Question.

          If a Mr Jim Subway, registered jimsubway.com and sold sandwiches from it, could Subway sue him ?

          I'll go speak to a professional If I have to but I generally find there's a pro hanging around o n the WF in every area...
          Simon,

          This is not legal advice, but if I knew you were going to proceed with that name POST Trademark by the other company, and I knew they would vigoruosly defend their position, I'd throw every bit of my net worth on a bet they would win a suit hands down. "beachbodyfitness" is the essence of their claim to that Trademark.

          However, if you had been doing business using that name PRIOR to the grant of TM you would have every right to defend and in all probability prevail in any legal actions demanding you cease and desist use of the name.

          As a little background for the reason I say that, is a good friend of mine was very successful in his line of work. So much so that he started franchising his business to hundreds of franchisees. The name was clearly nationally known.

          But a little shop in Arizona had been using that name for many years locally. When he attempted to sell a franchise in that area he was shut down by the courts due to the fact the other business had long been established and hence had a legitimate claim to the name. He was prohibited from selling a franchise within a geographical boundry that could cause confusion for the other business.


          "Question.

          If a Mr Jim Subway, registered jimsubway.com and sold sandwiches from it, could Subway sue him ?"

          Yes they could, and given a particular set of circumstances they may be required to take action for the sole purpose of defending their name on record. The outcome may not be as important as the action. Part of the responibilities of being granted a Trademark is that you defend that Trademark or you lose it. Think Kleenex.

          Back to your quandry...you will most certainly require legal assistance regarding your proposed name. Even if it is only to get a Letter of Opinion. If your business falls outside the scope of the other companies Trademark you may be legally in the clear, but that won't stop the atty's from smelling money.

          Again, none of this is legal advice, it's just a subject I like talking about...

          ~Bill
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          • Profile picture of the author AllAboutAction
            The NPR Planet Money Podcast went over this topic in a rather interesting manner the other day. Check it out here.
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  • Profile picture of the author Alex Mensah
    Trademark is really important to check out, especially when buying aged domains. I was taking a look at some vids on buying aged domains and they were mentioning about checking out the trademark before purchasing.
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  • Profile picture of the author Ron Killian
    Thanks David, I've read the trademark per what Simon posted. Still has the phrase as one word. I still don't understand how they can threaten any one that uses the words separately?

    They also have not stated how using the two words infringes on their trademark. It's been very vague, just saying it infringes.

    Like Simon said, using the two words is such a generic term. A G search shows over 177k results for the two word phrase. Are they going to contact all 177k? A number of them being major companies or websites.

    Or they are trying to eliminate those that are possible (by a big stretch) "competition"?
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    • Profile picture of the author davezan
      Originally Posted by Ron Killian View Post

      Thanks David, I've read the trademark per what Simon posted. Still has the phrase as one word. I still don't understand how they can threaten any one that uses the words separately?
      Context. If the other site you mentioned didn't use it in the context of what the
      mark is for, it's possible the trademark holder would've left them alone.
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      David

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