In court documents dated September 20, 2016, Bodybuilding.com is seeking $100 million in damages from PhD Fitness and its principal Dr Jim Stoppani, and GNC. The suit also names GNC Does 1-100, which is a reference to any GNC franchises which may also try to sell the product.
This is an amendment to a complaint originally filed in June by Bodybuilding.com against PhD Fitness and Dr Stoppani. As in the original complaint, Bodybuilding.com is seeking recognition that it is the sole owner of the JYM mark and cancellation of the “JYM Supplement Science” trademark (US Registration Number: 4,561,658) owned by Dr Stoppani/ PhD Fitness, which was registered by the USPTO on July 1, 2014.
The JYM products were launched in 2013 and sold exclusively via Bodybuilding.com, but the development agreement between Bodybuilding.com and Dr Stoppani/PhD Fitness expired on May 17, 2016, subject to certain provisions (the agreement remains confidential).
GNC started offering products under the JYM Supplement Science brand this summer, and Bodybuilding.com has now added GNC to its complaint. The online retailer is seeking damages “estimated to be in excess of $100,000,000” and temporary and preliminary injunctions against the defendants from marketing, advertising, and selling any products using the JYM mark.
Requests for comment from GNC and Bodybuilding.com went unanswered before publication.
However, Bodybuilding.com CEO Richard Jalichandra posted a statement on the online retailer’s site: “Bodybuilding.com’s policy is to not comment on pending litigation, but we will vigorously enforce our trademarks and intellectual property rights. That said, I can emphasize this: Bodybuilding.com has sued the former celebrity endorser and the [other] retailer [selling JYM products], and is evaluating legal options with respect to the retailer’s individual franchisees and any other retailer who tries to sell JYM products without our express written permission.”
Countersuits and injunctions
Dr Stoppani fought back with a countersuit filed in July seeking a declaratory judgment that he is the sole owner of all rights, title, and interest in the JYM mark.
In addition, on September 1, 2016, Dr Stoppani filed a preliminary injunction against Bodybuilding.com “or any other person or entity acting in concert with or under control of BB.com, from the manufacture of, or causing any other third-party to manufacture, any product sold under the “JYM” name”, according to court documents.
The injunction also seeks to stop Bodybuilding.com “from using any product formulas or specifications developed and/or provided by Stoppani to manufacture”.
Following the launch of the JYM Supplement Science brand at GNC, Dr Stoppani published a letter on the GNC Live Well site titled, Breaking My Silence.
“I want to assure you that JYM Supplement Science, the JYM Army, and myself are moving forward to educate people and spread the truth about proper supplementation and full product transparency. And that’s precisely why I’ve launched the JYM Supplement Science “2.0.” line of products that you will find for sale on this site,” he wrote.
“The labels of the new JYM products will be your proof that the formulas were in fact created by me. Turn the container around and you’ll see my picture, as well as “My Promise” as to the authenticity of the product. My JYM Supplement Science products have always carried my image and promise, so make sure to look for that on every bottle and container of JYM product you purchase.”
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: 4,561,658), but Bodybuilding.com’s complaint seeks to cancel this trademark, which it alleges is damaging.