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 If you belong to a Fit U health club in California then you may notice a few changes in the coming weeks. Specifically, the gyms are going to have to stop calling themselves Fit U following a federal district court in Florida’s issuance of a preliminary injunction in a trademark infringement suit brought by a company that operates gyms under the You Fit mark (You Fit Inc. v. Pleasanton Fitness LLC, No. 12-01917, (M.D. Fla., Feb. 11, 2013). This decision struck me as notable for a few reasons.

First, when I was reading the opinion I initially assumed that the preliminary injunction—which the court noted is “an extraordinary and drastic remedy”—was only issuing because of the complicated past relationship between the parties. The defendants, who by the time the complaint was filed had opened at least ten Fit U gyms in California, used to operate a You Fit franchise in Phoenix. The franchise relationship seemed doomed from the start and after operating the You Fit location for approximately one year the defendants asked to terminate the agreement. You Fit acquiesced, but not, it would seem, before the relationship had already been frayed.

Given the past relationship between the two parties, and the defendants’ decision to use a mark that on its face seems so similar to the plaintiffs’ mark, I assumed that the intent factor would be pivotal to the court’s likelihood of confusion analysis. I was wrong. The court found that factor “neutral.” There was some evidence that the defendants wanted to piggy back off of You Fit’s brand awareness, but there was also evidence that the Fit U mark was chosen because it is a contraction of “Fitness Unlimited,” which is a California trade name.

So, if the intent factor did not help either party, then surely the court justified its issuance of a preliminary injunction on the basis that the You Fit marks were strong and entitled to maximum protection, right? The answer to that question is a little complicated, and in fact brings up the second interesting point in the court’s decision.

In fact, the court’s determination that that “You Fit” is suggestive is noteworthy for two reasons. First, this determination was premised on the fact that “there are multiple meanings of the word ‘fit,’” and thus, the court said, “an imaginative leap is required to associate Plaintiffs’ marks with a health club.” There are indeed multiple definitions for “fit.” However, I am not sure that a great deal of imagination is required to associate the plaintiffs’ mark with a gym when the word “fit” is immediately preceded by the pronoun “you.”

Moreover, the court noted that there are more than 4,000 live trademark registrations that include the word “fit.” It is not clear exactly how many of those marks use the word for its association with physical fitness, but  the connection was strong enough to lead the court to determine that “the use of common formative words utilized frequently in Plaintiffs' marketplace significantly weakens the marks and diminishes the scope of their protection.” This is the second noteworthy component of the court’s finding with respect to the strength of the You Fit mark: it found the mark to be weak and entitled to limited protection. 

So with two confusion factors down (I did not tick through the factors in the same order that the court did), we have a weak suggestive mark that is entitled to limited protection, and we have a neutral finding with respect to the defendants’ intent. These factors alone don’t seem to indicate that the balance is leaning heavily in favor of issuing “an extraordinary and drastic remedy.” But, issue the preliminary injunction the court did, and it did so in large part on the basis of two reviews found on Yelp.com. 

Before I get to the Yelp reviews I will point out that the court determined that many of the other factors weighed in You Fit’s favor. Among these factors was the one that assesses the similarity of the marks. The marks “are plainly very similar,” the court said, though it noted that the Fit U logo, which places the word Fit over top of the letter U, “diminishes similarity because its appearance differs from You Fit’s marks.” Still, on the whole the two marks are similar, the court said. It also determined that the services offered under the marks were similar, and that those services were targeted towards similar customers and through similar service outlets. 

Back to the Yelp.com reviews. The court found particularly relevant to the issue of actual confusion the fact that “at least one consumer is actually confused about the differences between You Fit gyms and Fit U gyms.” This one consumer posted a review on Yelp.com in which the user, who used to be a member at a You Fit location in Arizona, moved to California and saw a Fit U gym. The commenter states that he was “soo confused,” and he noted that both gyms “use the same color scheme on their sign and the motto seemed the same.” Another commenter merely states that the two gyms are “VERY similar.” 

The defendants objected to these reviews on the basis that they were hearsay. The court said they weren’t hearsay, and found the reviews relevant. Interestingly, the court said: “While these anonymous posts are not conclusive evidence of actual confusion, they are indicative of potential consumer confusion.” You may recall that the relevant factor assesses actual confusion, not “indic[ia] of potential consumer confusion.” 

Moreover, although the court recognized that Yelp reviews are anonymous, that cautionary note may have understated the inherent risks of relying on these sorts of reviews in these types of litigation. In a recent BNA Insight article, Ten Things You Need to Know About Social Media and Intellectual Property in 2013, Ropes & Gray attorneys Peter Brody and Mariel Goetz warned about “astroturfing.” Astroturfing, the authors explained, is where “employees and affiliate marketers may try to give their brand a boost by posing as regular consumers and posting favorable comments on sites like Amazon and Yelp (or posting negative comments about competitors’ brands).”  

There is of course no indication (and I am not suggesting) that astroturfing had anything to do with this case. And if all of the other confusion factors weighed heavily in favor of You Fit then I think I would have been much less surprised both at the court’s ultimate decision, and at its handling of the actual confusion factor. But I have to admit that I was taken aback when I got to the end of the court’s decision and saw that it chose to take the “extraordinary and drastic” action of issuing a preliminary injunction on these facts. What do you think? You can read the decision here. Did the court get it right?