Active 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:
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”.