On November 11, 2021, fitness-tech company iFIT, Inc. (“iFIT”) filed a complaint in the U.S. District Court for the district of Utah, claiming that lingerie and beauty retailer Victoria’s Secret infringed upon its registered SWEAT trademarks by prominently using “SWEAT” in its social media promotions for its fitness apparel and services.
According to the complaint, iFIT is “one of the largest manufacturers of exercise and fitness equipment in the world,” and since early 2017 has been selling and offering goods and services with the registered SWEAT mark, notably in connection with a highly popular women-oriented fitness app and website. iFIT claimed as a result of “substantial sales and advertising and promotion” the SWEAT mark became “widely and favorably known as identifying [iFIT’s] goods and services.” That is, consumers have grown to associate the SWEAT mark with iFIT’s fitness classes and apparel, among other things. Consequently, iFIT claimed that a collection of social media posts by Victoria’s Secret prominently featuring the word “sweat” in large, bold letters alongside Victoria’s Secret’s own fitness apparel and sponsored classes, infringed iFIT’s registered SWEAT mark, in a way that was likely to cause confusion and to mislead consumers regarding the source of Victoria’s Secret’s goods and services. iFIT further noted that Victoria Secret’s use of images of a young, fit female model was done “purposefully” to resemble Kayla Itsines, the Australian personal trainer who founded iFIT’s SWEAT app, increasing the likelihood that consumers would mistakenly believe that Victoria’s Secret-sponsored fitness classes, and related fitness goods, were offered by or affiliated with iFIT.
Trademark Protection Available for SWEAT?
For a term like “sweat” to become a trademark, the word must function to identify the source of the goods or services in connection with which it is used. Depending on the type of mark, and the goods or services which the mark promotes, a mark may qualify for trademark protection. For example, marks which are fanciful, that is are a made-up word or phrase coined for use as a trademark, will be considered inherently distinctive and be protectable as a trademark. The same is true for an arbitrary mark (a common word or symbol that does not describe the goods or services) and a suggestive mark (a mark which alludes to a characteristic of the goods or services, but does not describe the goods or services directly).
On the other hand, descriptive marks (marks which directly describe the goods or services or a quality or feature of those goods or services) have a more challenging path to obtaining trademark protection. A descriptive mark can only acquire sufficient distinctiveness to merit trademark protection by providing evidence that the mark has become associated by consumers with the provider of the goods or services. In other words, through promotion and use the descriptive mark has obtained what is known as “secondary meaning.” Unlike descriptive terms, a generic term (the common name or dictionary definition of a product or service) can never become a trademark, no matter how long it has been used or how much money has been spent to promote its use..
In this case, it is likely that iFIT will contend that its SWEAT mark for fitness apparel and classes is suggestive, rather than descriptive, avoiding any requirement of adducing evidence of secondary meaning. Although the line between a suggestive and a descriptive mark can be difficult to draw, a mark will be considered to be suggestive if any mental gymnastics or imagination is required by the consumer to associate the mark with a quality or feature of the promoted good or service.
Even if SWEAT is considered by the Court to be descriptive, iFIT is likely to be able to come forward with evidence of secondary meaning to demonstrate that SWEAT is associated by consumers with iFIT’s fitness related goods and services and, as a result, is a protectable trademark.
Depending on the nature of the goods and services offered, any everyday word can qualify for trademark protection. It is important, therefore, to conduct appropriate due diligence prior to naming new products or services, and prior to even using common terms in an advertisement in a standalone or prominent manner. The use of a term or design in a prominent manner, and not necessarily as a trademark, may still give rise to a claim for trademark infringement, unfair competition and deceptive trade practices.
Trademark clearance searching is a key tool to reduce the risk of challenges to use of a new product name or advertising campaign. A properly conducted clearance search will help identify and assess the risk of such a challenge, allowing the user to choose to avoid a challenge or to make modifications to the name or campaign which could reduce the risk of challenge. Note that trademark clearance searching should be done with the input of a licensed trademark attorney who can assist with fashioning a search of appropriate scope and advising on the search results.
Timothy Chung, a law clerk in the New York office, contributed to this post.