PILATES v. GEORGETOWN BODYWORKS DEEP MUSCLE

The opinion of the court was delivered by: Kay, United States Magistrate Judge.

MEMORANDUM OPINION

Pending before this Court is Defendant/Counterplaintiff Willard Green's Supplemental Motion for Summary Judgment ("Motion") [102], Plaintiff/Counterdefendant Pilates, Inc.'s opposition thereto ("Opposition") [103], and Defendant/Counterplaintiff Willard Green's reply ("Reply") [104]. Plaintiff Pilates, Inc. (hereinafter "Plaintiff" or "Pilates, Inc."), in its Complaint, alleged entitlement to trademark protection for the PILATES marks for exercise instruction services [Registration No. 1,405,304] and equipment [Registration No. 1,907,447], and the PILATES STUDIO mark [Registration No. 1,602,929] (collectively, the "Marks"). Plaintiff initiated a civil action against Defendant Willard Green (hereinafter "Defendant" or "Mr. Green"), who was the proprietor and/or manager of Defendant Georgetown Bodyworks Deep Muscle Massage Centers, Inc. d/b/a Georgetown Bodyworks Fitness Centers, for an alleged infringement of the Marks and unfair competition under Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. § 1114 and § 1125(a). Mr. Green, in turn, filed a counterclaim for damages and declaratory relief against Pilates, Inc., requesting a determination that the Marks were invalid and should therefore be cancelled, and further urging the Court to award reimbursement of his attorneys' fees.

On October 19, 2000, Judge Miriam Cederbaum of the United States District Court for the Southern District of New York issued a Memorandum Opinion in Pilates, Inc. v. Current Concepts, 120 F. Supp.2d 286 (S.D.N.Y. 2000), a case also involving Plaintiff Pilates, Inc. and alleging infringement of two of the PILATES trademarks [for exercise instruction services and exercise equipment]. Judge Cederbaum invalidated the two trademarks, holding that: 1) both marks were generic; 2) if there was a PILATES equipment trademark, it had been abandoned long before Plaintiff applied for its registration, and its registration was obtained by Plaintiff through fraud; and 3) the PILATES exercise instruction services mark was invalidly assigned in gross.*fn1

In the instant case, Plaintiff Pilates, Inc. and Defendant Willard Green agree that the two PILATES marks at issue in the Current Concepts case are no longer contested since they have been cancelled by the United States Patent and Trademark Office ("PTO"). Defendant contends however that Pilates, Inc. is still enforcing its use of the PILATES STUDIO mark and thus, that mark remains disputed between Pilates, Inc. and Mr. Green. Defendant asserts that the PILATES STUDIO mark should be cancelled because Plaintiffs disclaimer of the term "PILATES" in a requested amended registration of the "PILATES STUDIO" mark creates an invalid non-registrable mark.*fn2

Upon consideration of the memoranda and exhibits submitted in connection with this Motion, the opposition thereto, and oral argument having been held on April 24, 2001, for the reasons set forth below, the Defendant's Motion is granted.

I. BACKGROUND*fn3

In or around 1914, Joseph Pilates developed a method of conditioning incorporating specific exercises designed to strengthen the entire body, and enhance flexibility. Mr. Pilates also developed numerous pieces of equipment for use in connection with the exercises. In the mid-1920's, Mr. Pilates and his wife, Clara, emigrated to the United States and opened an exercise studio in New York City. Between 1927 and 1951, Mr. Pilates obtained patents for several pieces of the exercise equipment he had invented.

In 1965, Mr. Pilates opened a studio in the beauty salon at Henri Bendel, a department store in New York City, where he taught his Pilates method of conditioning. Mr. Pilates taught a number of students who went on to become Pilates instructors themselves. Mr. Pilates died in 1967; his wife continued to teach at and run the studio until 1970.

On March 3, 1970, John Steel, an attorney representing Mrs. Pilates, formed a New York corporation called 939 Studio Corporation ("939 Studio") for the purpose of owning and operating the studio at which Mr. and Mrs. Pilates had taught, and providing financial support for Mrs. Pilates. In September 1971, Mr. Steel formed a limited partnership, between 939 Studio [general partner] and approximately 20 investors [limited partners], which then purchased the assets of the studio from Mrs. Pilates. On June 4, 1973, 939 Studio changed its name to Pilates Studio, Inc. (the "first Pilates Studio, Inc."). That same year, Romana Kryzanowska, who had trained and studied with Mr. and Mrs. Pilates, became a 50% shareholder of the first Pilates Studio, Inc. The remaining shares were owned by the limited partners of 939 Studio.

Mrs. Pilates died in 1976. In 1984, the first Pilates Studio, Inc.'s assets were sold to Aris Isotoner Gloves, Inc. ("Aris Isotoner") in an agreement dated August 14, 1984. The assignment provided for the transfer of the marks PILATES [exercise instruction services] and PILATES STUDIO. The assignment did not mention a PILATES trademark for exercise equipment.

On December 30, 1986, Aris Isotoner transferred all assets related to its Pilates business for $15,000 to Healite, Inc., which was wholly-owned and operated by Mr. Wee-Tai Hom. A separate assignment of the PILATES [exercise instruction services] and PILATES STUDIO trademarks was executed on the same day, with no mention of the equipment trademark. On January 6, 1987, Healite relocated the first Pilates Studio, Inc. to a different New York City address, and also incorporated another [second] Pilates Studio, Inc., which was a wholly-owned subsidiary of Healite. On April 1, 1989. Healite closed the first Pilates Studio, Inc.*fn4 Wee-Tai Hom sent [the first] Pilates Studio clients a letter referring them to three other exercise facilities and he received a small fee for such referrals. Used equipment from the [first] Pilates Studio was also distributed among these three facilities.

Plaintiff Pilates, Inc.

Sean Gallagher, who would later form Plaintiff Pilates, Inc., acquired the trademark registrations for the PILATES mark [exercise instruction services] and the PI-LATES STUDIO mark for $17,000, from Wee Tai-Hom, under an asset purchase agreement effective August 3, 1992. The agreement did not mention a trademark for equipment. Gallagher also acquired the studio's archives, including photographs, books and documents, and client lists, the majority of which were discarded by him.

Mr. Gallagher incorporated Pilates, Inc. in 1992; he is the President and sole shareholder of Plaintiff corporation. Plaintiffs business includes providing instruction in the Pilates method of exercise; training Pilates instructors; and selling Pilates equipment and merchandise. In June 1994, Gallagher assigned the PILATES STUDIO trademark to Pilates Inc., which is now the registered holder*fn5 Plaintiff has vigorously enforced the Pilates Marks since it acquired them. Plaintiff has sent ...