The opinion of the court was delivered by: Kay, United States Magistrate Judge.
Pending before this Court is Defendant/Counterplaintiff
Willard Green's Supplemental Motion for Summary Judgment
("Motion") , Plaintiff/Counterdefendant Pilates, Inc.'s
opposition thereto ("Opposition") , and
Defendant/Counterplaintiff Willard Green's reply ("Reply")
. 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
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.
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.
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 ...