According to court documents, PhD Fitness and Dr Stoppani is seeking a declaratory judgment that they are the sole owners of all rights, title, and interest in the JYM mark. As reported earlier this month by NutraIngredients-USA, Bodybuilding.com’s original lawsuit sought recognition that it is the sole owner of the JYM mark.
The countersuit is also seeking preliminary and permanent injunctions against Bodybuilding.com “and those acting in privity or concert with Bodybuilding.com from the unauthorized marketing, advertising, and selling of Infringing Products and Services using the JYM mark or a mark that is substantially or confusingly similar to the JYM mark”.
In addition, damages of at least $50 million are being sought.
Bodybuilding.com declined to comment on the countersuit, telling us that it does not comment on pending litigation.
Who owns the mark?
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 original Bodybuilding.com lawsuit seeks to cancel this trademark, which it alleges is damaging.
The mark was first launched in 2013, but development work for the products began earlier than that. According to the countersuit, Dr Stoppani decided he wanted to develop and market his own nutritional supplement line in 2012, and by the fall of 2012 had developed a “pre-workout” supplement. He made plans to outsource manufacturing to third parties and began discussions with interested partners, including Bodybuilding.com, about selling the product.
The countersuit alleges that Dr Stoppani met with John Hardesty and Martin Rosales of Bodybuilding.com on December 12, 2012, about promoting “Jim’s Products”. The relationship continued to develop and in 2013 Hardesty suggested “JYM” as the name of the brand. “The stated intent was to find a name that would somehow utilize Jim Stoppani’s name, since he was going to create the products and since his reputation and involvement was going to be the primary selling tool for the product,” states the countersuit.
The countersuit also alleges that the name Bodybuilding.com does not appear anywhere on the containers of JYM products (the labels state that the products are distributed by PhD Fitness), and that comments or questions are directed at Stoppani’s Twitter page.
The countersuit also alleges that Bodybuilding.com sent any adverse event reports (AERs) to PhD Fitness and Stoppani to handle.
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: "Clearly, PhD Fitness and Stoppani's counterclaims raise several important questions. The factual allegations supporting the counterclaims provide a somewhat more detailed account of discussions between the companies. Important factors in the outcome of this dispute will center around how the "JYM" mark was created and how that creation will be interpreted under the terms of the parties' Development Agreement. PhD Fitness and Stoppani concede that it was a Bodybuilding.com representative who suggested the name "JYM" in February 2013 at a meeting between representatives of both companies.
"However, the story set forth in the counterclaims certainly doesn't end there. The dispute seems to revolve around whether that February 2013 meeting (and subsequent discussions) constituted a trademark that was "developed in conjunction with" PhD Fitness as allegedly stated in the Development Agreement. Presumably, if PhD Fitness and Stoppani own the trademark rights as alleged, then those rights would most-likely revert back to them upon expiration of the agreement. At the end of the day, the exact terms of the Development Agreement, which no party has submitted to the Court, will provide the most guidance as to ownership rights. Regardless, it makes for an interesting dispute between well-known entities that have worked together closely for years."