IP Law Daily Creator of ‘Medical Exercise Specialist’ certification program can proceed with infringement claims
Wednesday, October 19, 2016

Creator of ‘Medical Exercise Specialist’ certification program can proceed with infringement claims

By Thomas Long, J.D.

The creator of a certification program for fitness professionals who work with post-rehabilitation patients could go forward with trademark infringement claims against the American Council on Exercise (ACE) for using the mark "Medical Exercise Specialist" in connection with a competing certification program, the federal district court in Houston has decided. There were genuine issues of material fact as to whether ACE engaged in fair use of the mark and whether the mark had lost source-identifying significance through "naked licensing" (Jones v. American Council on Exercise, October 18, 2016, Miller, G.).

Plaintiff Michael Jones, a doctor of physiology and the founder of American Academy of Health, Fitness & Rehabilitation Professionals (AAHRFP), asserted that he created a program to train and certify fitness professionals who work with post-rehabilitation patients and that he uses the term "Medical Exercise Specialist" in connection with the certification, course, and exam. He allegedly began using the term in 1994 and promoted it extensively. Jones claimed that he held common-law trademark rights in the term.

According to Jones, ACE launched a competing certification, initially called "Advanced Clinical Exercise Specialist." From 2008 through 2015, ACE called the certification "Advanced Health and Fitness Specialist," and then allegedly began using the term "Medical Exercise Specialist" in 2015. Jones filed suit against ACE for trademark infringement. ACE moved for summary judgment, asserting that it had engaged in fair use, and that Jones had abandoned any trademark rights he had in the term by failing to exercise any control over certified individuals use the designation.

Fair use. ACE argued that it did not use the term "Medical Exercise Specialist" as a mark and instead used it fairly to describe the type of program it offered. According to ACE, "Medical Exercise Specialist" was the most descriptive term of the job role for somebody who specialized in medical exercise. To qualify for a fair use defense under the Lanham Act, ACE had to show that it used "Medical Exercise Specialist" other than as a mark, in a descriptive sense, and in good faith. The court held that ACE failed to establish the first two requirements as a matter of law and denied the motion.

Jones argued that ACE used the term as a mark because it featured the term prominently, in capital letters. He also contended that ACE’s use of its house mark, "ACE," on the same marketing materials as the phrase "Medical Exercise Specialist" showed that ACE intended the term to be part of its source-identifying mark. In the court’s view, there were too many questions of fact to find as a matter of law that ACE did not use the term "Medical Exercise Specialist" as a mark. The phrase appeared more prominently than the house brand "ACE" in many locations on ACE’s website, in a larger font and at the top of the page. These instances could be deemed trademark uses.

The court also determined that there were factual issues with respect to whether ACE used the phrase in a descriptive sense. Jones argued that "Medical Exercise Specialist" was "suggestive" and not "descriptive." Although the term was made up of generic terms—"medical exercise" and "exercise specialist"—there was no dictionary definition for the entire term. A consumer encountering the term would have to use some imagination to understand what it meant. The fact that ACE had used other terms to describe a similar program indicated that competitors would not necessarily need to use the phrase "Medical Exercise Specialist" to describe their certification programs.

Naked licensing. ACE argued that Jones had engaged in "naked licensing" by granting licenses to certified persons and then failing to control the quality of services under the mark. Naked licensing generally constitutes abandonment of a mark. Jones testified that people who pass his Medical Exercise Specialist exam did not have to check in with Jones again and that there was no written license agreement for their use of the term. Graduates of Jones’s program were allowed to use the "Medical Exercise Specialist designation" to promote themselves and their practices or businesses. Continuing education courses were offered but were not required to maintain certification.

Jones, however, raised a genuine issue of material fact as to whether he exercised sufficient quality control over the services offered under the mark. Jones asserted that the required prospective graduates to take "dozens of lessons and quizzes" and a two-part final exam. Moreover, Jones presented evidence that third parties continued to associate the term "Medical Exercise Specialist" exclusively with Jones’s program. Accordingly, summary judgment was also denied on this ground.

The case is No. 4:15-cv-03270.

Attorneys: Wesley Graham Lotz (Fulkerson Lotz LLP) for Michael Jones. Neil D. Greenstein (TechMark Greenstein Law PC) and Wade Allen Johnson (Thompson & Knight LLP) for American Council on Exercise.

Companies: American Council on Exercise

MainStory: TopStory Trademark TexasNews

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