Thinking Outside the Box: CrossFit versus CrossBox at the PTAB
With health and exercise becoming a huge part of almost everyone’s lives these days, CrossFit®, the branded fitness regimen and a registered trademark of CrossFit, Inc., is known by almost everyone.[1] The founder, Greg Glassman, was the first person to define fitness in such a measurable way and to create specifically designed programs to improve fitness and health.[2] CrossFit is an all-around inclusive and encouraging fitness program that allows users to track and monitor their workout results to improve their own physical well-being and fitness.[3] The company uses its CrossFit mark on items and services which include fitness training, nutrition series, clothing, and footwear.[4]
On January 4th, the Trademark Trial and Appeal Board (“TTAB”) blocked Ralph Haeusler’s application to register “Crossbox” as a trademark for clothes, food, and organization of sports competitions.[5] TTAB stated that the term “Crossbox” was too similar to the fitness program, CrossFit, which is often referred to as “boxes” within gyms and markets goods and services to the same classes of customers.[6] The name “Crossbox” may also make consumers believe that it is associated or endorsed by CrossFit, when in actuality the two marks have no relation to one another.[7]
CrossFit defended their trademark and stated that their name was well-known and used in commerce.[8] Its main concern was that the new mark by Mr. Haeusler would cause confusion or mistake, or deceive consumers.[9] The business supported its statements by providing responses to surveys, proof of its millions of followers on social media, appearances in major publications, its annual CrossFit Games dating back to 2007 where almost 400,000 individuals qualified for last year, revenue from CrossFit branded seminars in the U.S., royalties and sponsorship payments from a leading workout brand, and references in several nonfiction and fiction books.[10] CrossFit stated that it was the answer to a “Jeopardy” game show clue which stated “[t]his workout regimen that has trademarked ‘sport of fitness’ calls it gyms ‘boxes.’”[11] Forbes Magazine even listed CrossFit as one of the most innovative consumer brands of 2016.[12]
Based on such evidence, TTAB held that CrossFit was known amongst the public in the fitness world and that the company’s registration covering footwear and clothing was broad enough to make Mr. Haeusler’s mark “legally identical” to CrossFit’s mark.[13] TTAB also decided that the two marks looked very similar to one another and could have easily confused people, who would assume a connection between the two parties.[14] Furthermore, the two marks both began with the word “cross” and “are likely to be seen as conveying the same meaning.”[15] TTAB will also strike down the registration of a mark if it feels that the products were “related in some manner or if the circumstances surrounding their marketing … could give rise to the mistaken belief that they emanate from the same source.”[16]
Mr. Haeusler attempted to persuade the TTAB with the argument that CrossFit’s trademark did not cover food whereas his mark encompassed coffee, ice cream, and tea.[17] However, TTAB dismissed that argument and held that CrossFit has been known to promote the importance of a balanced diet and has even had an impact on consumers’ food-buying habits.[18] The food items that Crossbox identified were considered to be commercially related to CrossFit’s training and nutrition information services.[19] Mr. Haeusler’s application to register Crossbox failed and the fame and life of CrossFit lives on.
Footnotes
