LawFit: Potential Pitfalls to Disaffiliating
Generally, CrossFit, Inc.’s (“CrossFit”) affiliates are granted a license to use the CrossFit name, trademarks, trade names, service marks or logos designated in writing by CrossFit. Those who are considering disaffiliating should weigh the loss of this right in their decision. Similarly, those who have disaffiliated should revisit their customer facing marketing, advertising, promotional materials, website, social media etc. to ensure CrossFit’s licensed marks are no longer being used. Continued use after disaffiliation could expose you to litigation risk.
Why does CrossFit do this? Intellectual property, including trademarks, are extremely important business assets. For example, CrossFit’s trademark, CROSSFIT®, is just one of many of their marks that contains a significant amount of value built through time, money, goodwill, and reputation. Of course, trademarks can be subject to misuse through, but not limited to, infringement, dilution, cybersquatting, false advertising, and tarnishment. A failure to enforce a trademark for misuses will result in a weakening of the mark and loss of distinctiveness, which can lead to a loss of the trademark.
CrossFit’s position. CrossFit is no stranger to monitoring for misuse and openly and aggressively enforcing their rights.
- CrossFit Inc. leads the fight and regularly goes to battle in court to protect its trademarks and the affiliates who license them[.]
- The CrossFit Journal, “CrossFit: Defending the Name,” p. 2, by Dale Saran (October 2013).
Enforcement examples. The following are a few of the many cases where CrossFit has brought legal action in an effort to preserve their intellectual property:
- CrossFit, Inc. v. Jenkins (D. Colo. Mar. 28, 2014) – Defendant owned and controlled a website with the domain name www.crossfitnutrition.com, which offered vitamins, supplements, and nutrition products for sale. CrossFit alleged that Defendant utilized the CrossFit marks to trade on the goodwill associated with the CrossFit name through the unauthorized website. The court granted monetary relief in the total amount of $122,780.09 and an order requiring the domain to be transferred to CrossFit.
- CrossFit, Inc. v. 2XR Fit Sys. (D.N.J. Mar. 11, 2014) – CrossFit alleged that Defendants used the following infringing terms deliberately in advertising their fitness training services, leading to customer confusion: “2XR Cross Fitness,” “2XR Xross Fitness,” and “2XR Bootcamp Cross Fitness,” and www.2xrbootcampcrossfitness.com. The Court held that the marks were substantially similar, and, therefore, likely to cause confusion to an unsuspecting consumer. Judgment entered against Defendants, in the total amount of $244,824.76.
- Crossfit, Inc. v. Quinnie (N.D. Ga. 2017) – CrossFit alleged that Defendant’s offering of fitness-training services under the name “KrossFit” and use of “KrossFit” in their marketing and advertising were violations of trademark law. Court entered judgment in favor of Plaintiff against Defendants for a total award of $49,704.50.
Takeaway. Given the financial and legal implications associated with misusing CrossFit’s intellectual property, please consider the following:
- Review your Affiliate Agreement’s terms and conditions on limitations of use of licensed marks.
- Those who choose to disaffiliate from CrossFit should review, among other things, any and all consumer-facing terms, phrases, marketing, and advertising to ensure there is no infringing content.
- When in doubt, contact an intellectual property lawyer to review your options.
Disclaimer: This post was created for general informational/educational purposes only. The information is not privileged and does not create an attorney-client relationship with the author. Nor is the post an offer to represent you. Its information should not be construed as legal advice or legal opinion on any specific facts or circumstances. You should not act or refrain from acting based upon any of the information on this site and are urged to consult a licensed attorney for legal advice on your specific situation.