Active Sues RunSignUp for “Couch to 5K”

IMG_2542Active has recently filed a lawsuit in US District Court in San Diego against Bickel Advisory Services, LLC (dba RunSignUp) and Bob Bickel personally and one of our employees for the infringement of their trademark “Couch to 5K“.

When we were notified of the suit, there were 9 training programs listed on RunSignUp with that term. Additionally a total of 30 events, of roughly 45,000 total events, had listed with that term over the past 7 years of RunSignUp’s existence. A total of 1,540 total participants had signed up for those training programs via RunSignUp over that time.

RunSignUp never used “Couch to 5k” itself, was unaware of any alleged trademark infringement by those listing on our site, and took immediate action to work with a number of running stores that had used the term “Couch to 5K” to refer to their training programs that were listed on RunSignUp. All references were removed from the RunSignUp site within 2 days of notice, and a process is in place to make sure that listings do not infringe going forward. RunSignUp takes trademarks seriously, and we will work with any trademark owner who simply notifies us (you need not sue us) to remove any valid infringing trademarks on our site.

As a web hosting facility for the endurance community, RunSignUp only has an obligation to protect against trademark infringement of events that post on our website if we are notified, which we did promptly. This is well established, including in a case where Tiffany’s took EBay all the way to the Supreme Court.

In addition, the term “Couch to 5K” has been very widely used since it first came into use in 1996, and Active registered the trademark in 2010. We discussed the background of this term with the original developers of the training program, Dave Camire (Cool Running Founder and Yankee Timing owner) and Josh Clark (who worked with Dave on the Cool Running website). Before Dave sold Cool Running to Active in 2007, the term had become very widespread. In fact, two of the running stores we contacted that had multiple training programs on our site said that they had used the term since about 2003 and 2006.

Using the Wayback Machine to look at internet archives, it is simple to find websites like Beginner Triathlete that had a Couch to 5K Training Program in 2004 – https://web.archive.org/web/20040404180509/http://www.beginnertriathlete.com/Programs/couch_to_5k_overview.htm.

The term is so widespread, there is even a course at Wellesely College called “Couch to 5K”.

Doing a quick Google search shows 622,000 hits on the term “Couch to 5K”. Here is a quick set of examples:

https://secure.touchnet.net/C21156_ustores/web/product_detail.jsp?PRODUCTID=512&SINGLESTORE=true

http://elmhurstrunningclub.com/couch-to-5k/

https://www.orymca.org/single-post/2015/07/09/Couch-to-5K-Challenge

http://gocoaches.org/about/coaches-council-missy-price-ph-d/

https://courses.wellesley.edu/display_single_course_cb.php?crn=1494&semester=201502&pe_term=201502S2&skip_graphics=1&no_navs=1

http://www.wellesley.edu/athletics/physicaleducation/curriculum#shBJDZx5DpMKv0y0.97

http://eventcow.org/pplus_event/registration/brooketerra/5

https://southwestcounseling.redpodium.com/off-the-couch-5k

https://www.facebook.com/pg/Brosna-Couch-to-5k-1554582808128998/posts/?ref=page_internal

http://www.heartbreakhill.org/couch_5k.htm

http://saltlakecity.eventful.com/events/up-and-running-couch-5k-/E0-001-100072088-3

http://www.houstonchronicle.com/life/article/Area-programs-can-help-athletes-of-all-experience-6574807.php

https://app.racereach.com/images/jer.pdf

Summary

While we think we acted responsibly and consistent with our obligations, in order to avoid unnecessary legal fees, we offered to settle with Active by paying them our entire Processing Fee revenue from these events ($279). Unfortunately Active has rejected our settlement offer so we will defend ourselves in court based on prior case law. Hopefully this does not inspire Active to sue the many running stores and coaches and colleges and others who have inadvertently used the term “Couch to 5K”.

11 thoughts on “Active Sues RunSignUp for “Couch to 5K”

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  1. I can’t believe them, why would anyone do business with someone who sues when things don’t go their way, but they don’t like you, you are hunting them with your good business practices. It may be time for me to start my “I hate Active.com face book site” and wait for them to sue me. Keep up the fight Brian Rencher Race to Robie Creek Boise Idaho

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    1. I think the running community should boycott Active and see how they like it. There are too many new runners that like the term “couch to 5k” and for Active to think they can have a monopoly on that term is uncalled for.

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    2. so what for my proofing reading, they word “hunting” should be “hurting” my grandmother would have me at the chalk board for a spelling lesson

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  2. Bob, I’m happy to read that you take trademarks seriously. Now it sounds like you’re planning to challenge the validity of Active’s trademark, right? As I’m sure you know, if it’s a registered mark w/ the USPTO, defending against this claim will be an uphill battle. More importantly, consider that if Dave Camire’s first use of the mark in commerce was via Cool Running back in 1996, it’s quite likely that Active’s trademark claim stems from their acquisition of Cool Running, which more than likely included all IP, including the “Couch to 5K” mark. If so, proving contributory liability on trademark infringement hinges only on whether or not you responded swiftly in removing infringing marks.

    It won’t be easy for Active to prove any significant damages, given how common infringement of this mark has become. Though I’d imagine the limited damages is inconsequential here, as we all know why they’re going after you. Anyway, kudos for respecting trademarks. 😉

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    1. I don’t think this issue is with the validity of the trademark but in the fact that a site containing user generated content (e.g., eBay, Facebook, YouTube, etc.) can’t be fully responsible for what their users post. YouTube is the perfect example. They make it abundantly easy to file a “take down request” but they can’t police everything themselves. Is it expected that RunSignUp is supposed to download a list of all registered trademarks and actively prohibit users from using any of them? It’s a silly idea.

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  3. Wow, you seem to really annoy them Bob. But I guess when you’ve paid $1bn for a product that needs a total overhaul and is not the first choice of competitors, they’ve got to get their back somehow.

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  4. One more reason why I dislike corporate running.
    What you offered seems reasonable. And how did they trademark a common phrase?
    Our running club offers the “walk to run ” program. I believe the RRCA offers info to member clubs to help them offer the “walk to run ” program.

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  5. Active.com is just a greedy, greedy corporation. With their shady recurring yearly registration charges, hiding things behind multiples terms of service walls, and now this… I’d rather just stay as far away from them as possible.

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