In its claim for relief Bodybuilding is seeking recognition that it is the sole owner of the JYM mark. The online retailer is also seeking for temporary and permanent injunctions “against any third party now working with Stoppani to marketing, advertising, and selling of using the JYM mark or a mark that is substantially or confusingly similar to the JYM mark”.
A statement from Bodybuilding.com’s parent Liberty emailed to NutraIngredients-USA read: “Bodybuilding.com recently filed a lawsuit against PhD Fitness, LLC and Jim Stoppani with regard to use of the JYM trademark. Bodybuilding.com’s relationship with Jim Stoppani evolved over many years into a formal business partnership, which included developing and jointly promoting the JYM brand, sold exclusively by Bodybuilding.com for the past three years.
“While we do not comment on pending litigation, it is our hope that we can continue this mutually beneficial relationship going forward. In the interim, JYM products will continue to be available on the Bodybuilding.com website.”
Who owns the mark?
The lawsuit states that Bodybuilding.com independently created the JYM mark with the intention of working with Dr Stoppani as the celebrity product endorser. The retailer started using the JYM mark for dietary supplements sold exclusively on its online retail store in July 2013. According to the lawsuit, the development agreement between the two parties specified that Bodybuilding.com would pay PhD Fitness a flat-fee royalty for each JYM-branded product sold. The development agreement expired on May 17, 2016, subject to certain provisions. The agreement remains confidential.
While Bodybuilding.com never registered the trademark with the US Patent and Trademark Office (USPTO), Dr Stoppani and PhD Fitness filed registration applications for the JYM trademark with the USPTO in November 2015 for nutritional supplements (application serial number 86815808) and jerky, food bars, and beverages (application serial number 86815824). According to March 9, 2016 responses from the USPTO, the trademarks were refused, “because the applied-for mark merely describes a feature of applicant’s goods and/or services”. Both refusals have been challenged by the applicant.
Dr Stoppani/ PhD Fitness does own the trademark for ‘JYM Supplement Science’ (US Registration Number: 4561658), which was registered by the USPTO on July 1, 2014. The Bodybuilding.com lawsuit also seeks to cancel this trademark, which it alleges is damaging.
Stoppani: “I’m not concerned”
In a phone call with NutraIngredients-USA, Dr Stoppani said: “It’s very unfortunate that Bodybuilding.com has taken this stance on the trademarks and brand. Given my background in the industry, as a scientist, expert and consultant it’s ludicrous to say that I did not formulate my own products.
“I had a great relationship with Bodybuilding.com and hope to continue to work with them, but the plan was always to make the products available to as many people as possible and go to GNC, Amazon and others [once the development agreement expired on May 17, 2016].
“These products championed non-proprietary blends based on real research. They’re my formulations, and my IP.
“JYM Supplement Science is not a brand,” he added. “It’s an extension of what I do, who I am, what I teach. The brand is me.”
Dr Stoppani was confident in his position. “I’m not concerned at all about the outcome,” he said.
Attorney: “Bodybuilding.com appears to have a strong case, but…”
Commenting independently on the lawsuit, Kevin Bell, principal at law firm Porzio, Bromberg & Newman PC (which is not involved in this case), told NutraIngredients-USA that based on the facts alleged in the Complaint, it would appear that Bodybuilding.com has a strong case.
“Much of this will most-likely boil down to the facts set forth into the development agreement entered into between the parties,” he explained. “The ‘JYM’ mark has been applied for at the Patent and Trademark office in various classes by PhD Sciences and Mr. Stoppani. They reference the July 2013 date used by BodyBuilding.com as the first date the mark was used in commerce. This is good evidence for BodyBuilding.com. However, the trademark office continues to deny the application for the mark as ‘descriptive’, which may be why Bodybuilding did not file a trademark application to begin with.”
“I believe BodyBuilding.com has a good chance of prevailing if the allegations in the complaint are true. Interestingly, Bodybuilding.com continues to offer for sale JYM Supplement Science Products by PhD Sciences. While this may be subject of a separate agreement between the parties, it may cut against BodyBuilding.com's argument as to the irreparable harm due to use of the JYM-related mark,” concluded Bell.