Introducing Kinesiology with Majo, formerly doing business as KinesioMajo. Why the change?

This is my story about how and why I’m changing the name of my business, the business I’ve owned and operated for 8 years. 

I’ve been in the health and wellness industry since 1989. I’ve been a personal trainer, fitness group class instructor, gymnastic coach, ski instructor, assistant researcher in the field of practical exercise physiology, fitness appraiser, and kinesiolgist in injury prevention and physical rehabilitation.  At this point my business offers three types of services: Fascial Release Therapy, Muscle Balance Training and Athletic Conditioning.

In the fall of 2006, I started a sideline business in fitness training I called Point Fort Fit. In French, "point fort" means a strong quality, trait of personality or argument. “Point” alone is a homophone of “poing”, which means a fist symbolizing strength and power, or to me, confidence, diligence and commitment.

In the fall of 2010, I went to a seminar geared toward small business owners on business planning, management, and branding. I knew I wanted to take my business further and for that I needed to rebrand. Point Fort Fit was a less meaningful name for much of my English-speaking clientele. 

In November 2010 I began researching and asking some of my favorite clients to help me come up with a short business name that is fun to say, and describes who I am and what I can offer. Over time I discovered how much people liked “Majo”, the name I’ve always been known by, so I absolutely wanted to include it.

With my background in kinesiology — in 1996 I graduated from University of Montreal with a B.Sc. in Exercise Science and Kinesiology — I drew inspiration and came up with my new business name: KinesioMajo.  I thought Kinesio would be a fitting title for a kinesiologist.  For the ones that are not familiar with the kinesiology profession in Canada, I invite you to read this article I wrote with two colleagues: “What is a Kinesiologist?” and have a peek at the British Columbia Association of Kinesiologists and Canadian Kinesiolgy Alliance websites.

Was KinesioMajo bullied?

My first KinesioMajo business cards came in June 2011, followed shortly by my banner for sponsoring sporting events and my website was launched in July 2012. I crafted my logo to represent me and my business. The arm silhouette is a picture of me and the Majo with the flower has been the way I sign my skis. 

I was delighted how it all came together and was well received. Delighted until March 16, 2014, that is. That’s the day an international company named Kinesio (originally Kinesio Taping) sent me a letter accusing KinesioMajo of “Infringing Use of KINESIO Trademark.”  This was only two days after my three applied trademarks, including my KinesioMajo name and design, were published in the Canadian Trademarks Journal, and during the period I was awaiting their allowance for registration (or for potential oppositions and debates).

Kinesio was giving me 14 days to:

1. "Abandon my Trademark Applications No 1622393 and 1622395 (originally filed in April 2013)"
2. "Refrain from filing or applying any new Trademarks, trade names, business names, corporate names, domain names, or other designations containing KINESIO MAJO, KINESIO, and/or any other marks or names [they think] would be confusingly similar to the KINESIO trademark"
3. "Discontinue and permanently refrain from all use of the mark KINESIO MAJO, KINESIO, and any other confusingly similar marks and names, in any manner, but not limited to, on websites (e.g. kinesiomajo.com), in advertisements and promotional materials, on signage, on business cards, and any products and product packaging.”

“Kinesio Taping” was originally completely registered, in Canada, in July 2006 (Application No 1193942) but had a change in title becoming “Kinesio” alone in July 2011.  The description of its WARES is still, to date, “Adhesive tape with elastic and ventilation used for healing.”  However, Kinesio filed another application (No 1655606) in December 2013 with a more elaborate WARES description that competes with my marks WARES filed earlier on.  The Canadian Trademarks Office, during examination, did not see any conflict with my applications and Kinesio’s, therefore published mine without objections.

To respond (on April 8) to Kinesio’s letter (of March 16), my trademark agent and I agreed, due to the meaning and widespread use of the word and prefix ‘kinesio’ in my field of practice, this portion of my mark was less strong than the highly distinctive MAJO portion.  To alleviate Kinesio’s concerns we offered to:

1. “Delete ‘adhesive taping therapy’ from [my two opposed] trademark applications”
2. "Explain that [I do] “not sell adhesive tape or offer courses in the field of taping techniques in association with any marks incorporating the word KINESIO”
3. “Consent to the registration of [their] Application No 1655606 for KINESIO in the event that the MAJO marks are cited as a bar to registration.” 

This said my marks No 1622393 and 1622395 have been amended to the benefit of Kinesio.

Kinesio’s response (on April 24) was that “[our] arguments [had] no merit”.  Kinesio wrote back to us to say ‘‘‘kinesio’ does not mean ‘movement’ or ‘motion’.  Rather, ‘kinesio’ is a distinctive term coined by Kinesio’s founder Dr. Kenzo Kase nearly forty years ago.  It has no meaning other than to identify the source of genuine KINESIO products and services.” 

This was news to me since I was taught at university, the etymology of 'kinesio' describes it as a prefix meaning movement and motion, especially of human body parts, and originates from Ancient Greek.

See:

http://en.m.wiktionary.org/wiki/kinesio-
http://www.merriam-webster.com/medical/kinesio
http://www.macroevolution.net/biology-prefixes-kl.html#kinesi
http://medical-dictionary.thefreedictionary.com/kinesio-

In an email to my trademark agent (on April 2), I included a link to the Kinesio Taping website in the UK (http://www.kinesiotaping.co.uk/faq.jsp), that described the origins of the word Kinesio in its Facts sheet that I copied and pasted along the email – it read: “The word ‘Kinesio’ comes from the science of Kinesiology.  The taping method and tape follow Kinesiology theory; the treatment allows the body and muscles to move whilst assisting rehabilitation.”  My trademark agent included this above link in our response letter to Kinesio, of April 8, to reinforce our arguments.  When we received Kinesio’s letter of April 24 the above cited link no longer contained the fact about the origins of the word ‘kinesio’ on their facts list. Kinesio seems to have deleted it conveniently once I pointed out how it contradicts their case.

“A Guide to Trademarks” found on The Canadian Intellectual Property Office website lists “the kinds of marks that a company may not register" such as the ones including “Words on other languages” and “Clearly descriptive marks.” http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html#faq

I believe that it’s legitimate to question the Canadian Trademarks Office on the allowance of the KINESIO mark registration, if the word ‘Kinesio’ is known as an Ancient Greek prefix, originating from the same roots as the word Kinesiology.

Furthermore Kinesio (the tape company) stipulates that the “Kinesio” of KinesioMajo name “is undoubtedly the dominant portion of [my] mark”, as per “the inherent and commercial strength of Kinesio.”  This is nonsense. Kinesio Taping, as it was named then, never crossed my mind when I was developing my business name.  I wanted a name that described who I am and what I do, period. 

The strength of my brand is me, Majo. This is supported by testimonials on my website and Facebook page. See for yourself:

http://www.kinesiologywithmajo.com/testimonials/
https://www.facebook.com/pages/Kinesio-Majo/297480993600584

The first time Kinesio even popped onto my radar was February, 2013, as a result of my trademark agent’s initial search showing a company called Kinesio was registered.  After reading its WARES, she assured me there was nothing to worry about, pointing out that I do not sell tape nor certify health practitioners to implement healing taping therapy. 

The process has been extremely stressful for me. It’s cost me time and money I can’t afford.  My trademark agent mentioned more than once that the Kinesio people were taking an unusually aggressive approach. They’ve been completely unwilling to consider any of the alternatives I’ve offered.

In an article dated November 12, 2010, “Competitors tie up Kinesio in red tape over its therapeutic invention” in Albuquerque Business First, Kinesio Vice President Tomoko Kase says: “Our lawyers send out cease-and-desist orders, mostly for trademark violations.  We do it on a weekly basis.” Tomoko Kase concludes the article admitting that “[their] firm has reacted aggressively to trademark infringements, but [they] can’t act on every one. It has to keep focusing on evolving the tape and selling it.  [They] just keep going forward.”  However it turned toward my small business even if yet I don’t sell or use tape.  According to Kase, Kinesio’ sales reach annually more than $7 million; and most of their competitors “only sell tape and don’t compete with Kinesio’s core business of selling tape to clinical professionals and training them to use it.”  In the same article it reads, black on white, that the founder of Kinesio, Chiropractor Dr. Kenso Kase, named his “Kinesio Tex Tape, after the practice of kinesiology, which is the science of body movement.”  So I guess ‘kinesio’ either does or doesn’t mean movement depending on whether you’re the company’s founder or their lawyer.

See:

http://www.bizjournals.com/albuquerque/print-edition/2010/11/12/Competitors-tie-up-Kinesio-in-red-tape.html?page=all

As a matter of fact, I have been contacted by the owner and founder of Kinesio Sport Lab, aka KSL, a small endurance sport coaching business in Halifax.  Kinesio sent them very similar letters as the ones they sent to me for infringing their KINESIO mark.  KSL decided to go public just this week and hope to be able to keep their name.  The Herald Business, the Runner's World and Corsearch (a world wide leading company in trademark or branding clearance and protection solutions) already wrote articles on their story.

See:

http://thechronicleherald.ca/business/1240275-us-firm-demands-kinesio-name-change
http://www.runnersworld.com/general-interest/maker-of-kinesio-tape-threatens-sport-lab-in-name-dispute
http://www.trademarksandbrands.com/2014/10/13/kinesio-case-highlights-use-of-root-words-in-trademarks/

Helping me decide to come to the conclusion of cutting my losses, here is the advice I got from a lawyer specializing in commercial litigation and defamation: “This is one of those times when, even if you are correct in law (and you probably are), the economics of the matter make it impracticable to fight it.”  Fighting would have only extended my stress for years to come with much more legal fees.

That said, the good news is that my slogan “Your Physical Intelligence Expert”, is allowed for registration! The bad news is that I am voluntarily abandoning my marks KinesioMajo, name and design, (No 1622393 and 1622395); therefore, I am now re-launching with my new name and brand – Kinesiology with Majo.  All this has obviously cost me more money but I’m looking forward to turning the page. I can’t continue playing David to Kinesio’s Goliath. 

At the same time, I would like to warn everyone out there wishing to grow their businesses to be extremely careful with trying to be original and creative with their brand.  Before going wild just remember that existing words and names are always secure.  I lost $2,310.10 on attempting to trademark KinesioMajo as a name and its logo design, plus it cost me an extra $1,036.88 in legal fees since Kinesio’s first demand.  Unfortunately I have now to pay for a new name, logo design, website, domains, along with all other promotional material such as videos, business cards, signage, banners, not to mention all of my time and energy lost. This might be a small change for a big company but significant to a business like mine.

Sincerely thank you all for reading and supporting me and my small business by sharing this story, where ever you are. 

Be healthy; be fit.  Majo

Article written by: Majorie Lauzon
Copyright 2014

Posted: October 02, 2014 In: Profession of Kinesiology