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Judge denies injunction in yoga logo fight
Listen to this articleWhen Michael Wohl saw the pinwheel three years ago, he wondered why another yoga business was using his company’s logo.
Wohl is the founder of BodyWisdom Media Inc., a Bethesda-based company that sells yoga videos online. It has been using a pinwheel logo since 2002.
Athleta, a national apparel retailer, began using its pinwheel logo in 2007 and trademarked it in 2008.
Facing a five-year statute of limitations to challenge the trademark and wanting to expand into the yoga-apparel business, BodyWisdom filed suit in October.
A federal judge on Thursday denied BodyWisdom’s motion for a preliminary injunction against Athleta’s use of the pinwheel logo on yoga apparel. But Judge J. Frederick Motz also asked the two sides to come back to him with a proposed expedited schedule next week.
“I certainly don’t want Athleta to take advantage of a smaller company’s dilemma,” Motz said Thursday afternoon in U.S. District Court in Baltimore.
A lawyer for BodyWisdom said licensing companies do not want to work with the company on apparel until the logo issue is resolved.
“This junior user is coming and smothering out a senior user’s mark,” said Ruth Rivard, a Minneapolis lawyer. “A shirt with an Athleta pinwheel next to a shirt with a BodyWisdom pinwheel will look almost identical.”
But Motz ruled that since BodyWisdom is not yet in the apparel business, the lawsuit should continue on its normal track.
“Right or wrong, I have an abiding sense this is anticipatory as opposed to a present crisis,” Motz said during the 90-minute hearing.
California-based Athleta started as a catalogue company in the late 1990s and was purchased by The Gap Inc. for about $150 million in 2008. The company has been using its pinwheel logo, which it calls the Chi Design, “openly and notoriously,” one of its lawyers said.
“Over the past seven years, there has been no actual confusion between the two businesses,” said Laura Popp-Rosenberg, who is based in New York City.
Popp-Rosenberg questioned claims of a national profile by BodyWisdom, which Rivard said sells videos throughout the country through Amazon.com. Motz asked Rivard if BodyWisdom’s lawsuit implied “business is not good and it sought to make a deal with Athleta.”
Rivard replied BodyWisdom is doing well financially, which is why it filed suit.
“This is not a struggling brand that is grasping at straws to reinvigorate,” she said. “This is a growing enterprise.”
BodyWisdom’s lawsuit seeks a permanent injunction against Athleta to stop using the pinwheel logo, cancel its patents for the logo and destroy any marketing or promotional materials using the logo.
