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The Zest

Why nobody owns "Pilates," and what that means for your studio name

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Nobody owns the word "Pilates" as a trademark in the United States. In October 2000, a federal court in Manhattan ruled that PILATES is the generic name of a method of exercise and ordered the USPTO to cancel the two registrations that claimed it. You can use the word to describe your classes and put it in your studio name, but you can't register it as your mark, and neither can anyone else.

The case

The case is Pilates, Inc. v. Current Concepts, Inc., decided by Judge Miriam Cedarbaum of the U.S. District Court for the Southern District of New York. The plaintiff, Pilates, Inc., owned two federal registrations for the word PILATES. One covered exercise equipment, "namely reformers, exercise chairs, trapeze tables, resistance exercise units." The other covered exercise instruction services. The plaintiff sued an equipment maker, Current Concepts, and its founder Ken Endelman for infringing both. Balanced Body's own account of the case names Endelman and Balanced Body Inc. as the defendants.

The history matters. The opinion notes that Joseph Pilates was born in Germany in 1880 and developed a conditioning method of specific exercises "designed to strengthen the entire body." The service mark was first registered by Aris Isotoner Gloves, Inc. on August 12, 1986. Sean Gallagher later bought the registrations for PILATES and PILATES STUDIO for $17,000.

The plaintiff argued it could stop others from using the name. The court disagreed and entered judgment for the defendants on every claim.

Why the court called the word generic

A generic term is the common name for a thing. It tells you what something is, not who it comes from. The court found that "the primary significance of PILATES is as a method of exercise, not as a source of a product or service."

The evidence came from the people who teach it. One witness, Romana Kryzanowska, named at least two dozen people who use or had used the word to describe what they teach, and the witnesses testified that they had no other way to describe it than "Pilates." The court found that consumers of exercise instruction and equipment "generally do not use any other term" for the method, and that the word "is necessary to describe the exercises and teachings" that make up the method. Dictionaries and media coverage pointed the same way, using the word to refer to a method of exercise and not to a single source.

Here is the part studio owners find surprising. Once the word named the method, it also became generic for the equipment and the classes. The court said that because PILATES is the name of the method, "it is necessarily also generic with respect to equipment and services offered in connection with that method." It drew on an earlier case holding MONTESSORI generic for a teaching method and for the toys and teaching aids used with it.

The court's summary of the policy is one sentence: "Plaintiff cannot monopolize a method of exercise by asserting trademarks in the generic word used to describe it."

The other problems with the registrations

Genericness was enough to sink both marks, but the court found more. It held that if there had ever been a PILATES equipment trademark, it had been abandoned long before the plaintiff applied, and that the equipment registration was obtained through fraud. On the service mark, the court found an invalid "assignment in gross," meaning the name was sold without the business and goodwill it stood for. The court noted that the buyer was interested in "only naked trademarks rather than a business with accompanying good will."

That's a useful reminder on its own. A trademark is tied to the reputation of the business behind it. Buying the word without the business doesn't buy the rights. I wrote about how that works when a brand changes hands in the article on whether a trademark can be sold.

The court then directed the clerk to instruct the USPTO to cancel both registrations. Federal courts have that power under 15 U.S.C. § 1119, which says that "In any action involving a registered mark the court may determine the right to registration" and order cancellations.

What the ruling means for your studio name

You can call your classes Pilates. You can put Pilates in your studio name. A competitor can't send you a letter claiming to own the word, because the ruling took that claim off the table.

The flip side is that you can't own it either. The USPTO's test for a generic term asks what the category of services is and whether the public understands the term "primarily to refer to that genus of goods or services." For Pilates instruction, the word Pilates is the genus. Generic terms "are not registrable on the Principal Register under §2(f) or on the Supplemental Register," so use and time won't change that.

When your studio name includes the word, the USPTO will require you to disclaim it. The TMEP says generic matter "must be disclaimed to permit registration on the Principal Register." The disclaimer means your rights sit in the rest of the name. In a name like "Larkspur Pilates," the mark is Larkspur. If the rest of the name is also descriptive, there may be nothing left to register. I explain where names fall on that scale in the article on strong and weak names.

A lesson for the methods studios create now

Pilates became generic because the word was the only way people had to describe the method. The same thing can happen to a name you coin for your own signature format.

The statute treats a mark as abandoned when the owner's conduct, "including acts of omission as well as commission," causes it "to become the generic name for the goods or services" or otherwise lose its significance as a mark. And a registration can be cancelled "at any time" if the mark becomes the generic name for the goods or services.

So if you name a class format, use the name as a brand, not as the name of the exercise. Pair it with a plain description, like "the Larkspur Burn barre class," so the format has a generic name that isn't your mark. When teachers or clients start using your name as the only word for the workout, that's the warning sign. I wrote about what you can claim with a single word in the article on trademarking a word.

If you want to talk through how a studio name with Pilates or yoga in it gets registered, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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