As a fitness club owner or manager, you must understand the key intellectual property that is part of your business and take the necessary steps to protect and maintain these important assets. This article discusses trademarks and copyrights, two important types of intellectual property that are particularly relevant to fitness clubs. Smart owners of large and small health clubs know that their trademarks and copyrights are valuable assets and take the steps to properly protect and maintain these assets.
Trademarks are your brand. They are the words, slogans and/or designs that help consumers identify your goods and services, and distinguish them from competitors. It is essential to choose trademarks that are strong (i.e. that are distinct and memorable and that help distinguish your club from other clubs and businesses) and that are not infringing (i.e. that are not similar enough to trademarks already used by others such that your use would be likely to confuse consumers).
Before adopting a trademark, such as your business name, the best practice for new and established businesses is to engage a trademark attorney to carry out a trademark clearance search and provide you with an opinion regarding the risk of adopting the trademark. There are countless stories of new companies that have started using signs, marketing materials, websites and other materials only to later receive a cease and desist letter advising that one or more of their trademarks are infringing and demanding that they immediately discontinue all use of such trademarks. The cost to have an attorney complete a trademark search and provide an opinion is minimal compared with the loss of money and goodwill incurred by choosing a trademark that is infringing.
When you adopt a trademark, you will obtain common law rights in that trademark solely through your use of the mark. However, common law rights are limited to the geographic area in which you are using the mark. Therefore, you should consider filing a federal trademark application with the U.S. Patent and Trademark Office for your key marks, which will provide you with enhanced rights. In particular, a federal trademark registration provides you with rights throughout the United States, which allows you to enforce your rights against any business that adopts a confusingly similar trademark anywhere in the United States after the filing date of your trademark application.
Once you adopt a trademark, you need to take the steps to maintain and protect the trademark. This means that you should always be consistent in your use of the trademark, never permit a third party to use the trademark without a proper license, and police the marketplace to find and stop infringers. At a minimum, you should set up Google alerts for your trademarks and have someone monitor the Internet at least once a month to look for infringing uses that might be problematic.
Keeping the marketplace clean of confusingly similar trademarks is an essential step in maintaining the value of your trademarks.
Copyrights protect the original expression of ideas. For fitness clubs, most of the original content you create—including manuals, photos, text, your website, blog posts—are subject to copyright protection from the time you create them, and they are "fixed in a tangible form of expression."
Although not required, your website and all of your original materials should include a proper copyright notification in a prominent area to alert others to your copyright claim. In addition, you will gain enhanced rights by obtaining a copyright registration for your important works, including your website. A copyright registration is valuable because it allows you to potentially sue an infringer for copyright infringement and is helpful in persuading website hosts to quickly remove any web page that may be making unauthorized use of your copyright-protected content through the filing of a Digital Millennium Copyright Act (DMCA) takedown notice.
Importantly, fitness club owners must remember to make sure that anyone who creates, or has created, intellectual property, including copyrighted works, for your business has properly assigned all rights in such intellectual property to you. This includes works created by the owners of your club, friends, independent contractors, third-party logo designers, website designers, etc. Without the appropriate assignment, these individuals may later be able to claim to have rights in the intellectual property they created, which could potentially prevent you from continuing to use such intellectual property or could lead to liability.
The fitness industry is competitive, and your intellectual property "portfolio" can become one of your most valuable assets if carefully chosen and properly maintained and protected. Therefore, it is essential to understand your key intellectual property and make sure you take the appropriate steps to protect and maintain your intellectual property at all times as your business grows.
David Albert is a member of Cozen O'Connor's Intellectual Property Department in Philadelphia. His practice focuses on trademark and copyright prosecution, enforcement, litigation and licensing, and routinely involves the handling of Internet infringement and cybersquatting issues.