Legal Question in Intellectual Property in California

I was recently sent a cease-and-desist email from someone associated with CrossFit, Inc, demanding that I remove any references to the word "CrossFit" from my iPhone application's information on the Apple App Store. I complied with their request.

Firstly, is it true that I can't mention the word "CrossFit", which they have trademarked, in ANY way in my application's meta information? Including the title of the app, the description of the app and what it is for (especially, usage of the "CrossFit" trademark in a descriptive fashion, i.e., when describing the app as for "CrossFit style workouts"), or in the "meta" tags for the app (which are meant to help for people searching the store, I believe). They also demanded that I not use any "confusingly similar" words, like "CF", "CrossFitter", or "CrossFitness".

Secondly, there are still apps on the App Store that also make use of the "CrossFit" trademark. I have no idea if CrossFit Inc. is making similar demands from those other developers. What happens if they singled me out, and don't make similar demands of other people, who are ostensibly infringing on the trademark the same way I was?

One of the most dreadful examples is one app, whose title is "myWOD All-in-One WOD Log for XF Workouts (NOT AFFILIATED WITH CrossFit Inc)". Clearly, they are trying to skirt around the trademark issue by saying they are not affiliated with CrossFit Inc in the title, but get search hits for "CrossFit" because it is present in the title.

Asked on 5/31/13, 6:26 pm

1 Answer from Attorneys

Bryan Whipple Bryan R. R. Whipple, Attorney at Law
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Trademarks are specific to fairly broad product categories. An example I often give is that someone might be able to trademark the name "Purple Passion" for a lipstick, but that wouldn't prevent a paint manufacturer from trademarking the same name for a paint color, nor prevent a winery from using that name for a line of Zinfandel.

So, I don't think an attempt to block you from using the term "CrossFit" in all contexts is going to work, Using that term in some way that might be referring to computer software might be a valid request (and I use the word "might" without implying a high probability), but using the term to refer to something unconnected with the trademarked product is clearly legal and proper.

To avoid future troubles, I'd ask the trademark holder to advise you in full detail as to what the trademark covers, and how your use of the term might be an infringement. Some of these people are overly protective, and send cease-and-desist letters randomly to folks they think might be within 100 yards of infringing.

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5/31/13, 6:46 pm

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