Need a legal leg to stand on when it comes to others copying your gym? One attorney says that your imitator may be liable of “causing confusion.”
“There’s no reason in the world why a gym cannot have a trademark in its name [or] its logo. And there’s no reason that a gym can have a trademark in its color combination the way a university may have,” says James Astrachan, former chair of the Intellectual Property Committee of the Maryland State Bar Association.
If you trademark your team’s name, logo and/or colors, your gym is referred to as the “senior user,” Astrachan notes. He adds that a gym owner is then protected from “a junior user—a johnny-come-lately using those logos and colors.”
Another gym using your brand marks can be embarking on “infringing conduct,” because this is likely to cause confusion between them and you as the senior user, he says, or imply an affiliation or endorsement that is not there.
Trademarks are protected federally under the Lanham Act of 1946, and even slight variations of a trademarked logo are not acceptable. “If there’s likely to be confusion, there’s infringement,” says Astrachan, who also teaches Trademark and Unfair Competition at the University of Maryland Law School. The Lanham Act forbids, in part, that which “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of such person with another person.”
His recommendation is that new gyms go to a lawyer and order a trademark search, as there are databases full of registrations, articles and other information that can be mined to determine that your intended name, logo and/or colors have not already been trademarked.
“A lawyer would give somebody a clearance that the mark that you have determined to use is not likely to cause confusion with another existing mark in your marketplace,” Astrachan says.