Interview: Keeping Zumba’s brand in shape
Alan Veronick, global intellectual property counsel at Zumba Fitness in Hallandale, Florida, tells Michael Loney about the unique trademark challenges in stopping unlicensed instructors infringing the brand.
Zumba,a dance fitness program created by Colombian dancer and choreographer Alberto “Beto” Perez in the 1990s, has become a global craze. Classes are now taken in 182 countries by more than 15 million people.
Protecting the brand is Alan Veronick’s job. He handles all aspects of registration and enforcement of Zumba’s IP rights worldwide, as well as advertising and marketing clearance and license, talent and sponsorship agreements. “Our biggest challenge by far is the global nature of our business,” Veronick says. “We have instructors in over 180 countries. We sell apparel and other consumer products, either ourselves or through a distributor, in many of those countries. So we face challenges in countries all over the world from a brand enforcement standpoint—ranging from people who are teaching our programs without the proper licenses, to third parties manufacturing and selling fake clothing, DVDs, and other products.”
Veronick says China is the biggest problem in terms of product infringement and Brazil and Mexico are the biggest in terms of an unlicensed instructor problem.
The company tries to do as much as possible in-house. All U.S. prosecution is done in-house and Veronick directs outside counsel on prosecution in foreign markets. Zumba also tries to do as much as it can on enforcement in-house, only turning to outside counsel in situations it cannot resolve itself. Veronick has a team of eight under him that can speak several languages.
“We can’t afford to hire counsel every time we face a problem in every country so we try to do as much as we can here,” he says. “We try to leverage the language talents that we have in house as much as possible to deal with those issues that take place on the ground in all those different countries.”
He continues: “We also work with outside counsel on brand enforcement matters. We are fairly aggressive, having prosecuted enforcement actions during the past year in such diverse places as Brazil, Chile, China, Italy, Mexico, Malaysia, South Korea and the United States, among others.”
Veronick explains the company relies heavily on its instructors in individual countries as “our eyes and our ears on the ground there,” and gets hundreds of reports daily. It investigates those issues in-house and attempts to resolve as many as possible.
“We have also placed a value on educating our licensed instructors and fans of the Zumba programs on the importance of using our trademarks correctly, staying away from classes taught by unlicensed instructors, and being careful to make sure the Zumba products you are buying are authentic,” says Veronick. “To that end, we have a Facebook Page with over 320,000 followers called Stop Party Crashers. We use that as a platform to educate our instructors and the fans of the Zumba programs.”
He adds: “We started that two years ago and it has been very helpful in terms of receiving reports. People have their cell phones and they snap a picture of whatever they see, and they send it to us through the private message feature on Facebook. We use that to communicate with them in real time. We have seen increased interaction with people reporting to us through Facebook.”
It is a delicate balance between protecting the brand and not being overly aggressive about clamping down on people who may not be aware they are even infringing.
“We try to be friendly in our enforcement approach when we are dealing with individuals and gyms,” says Veronick. “We don’t want to alienate people and if they are teaching the program without a license we encourage them to attend a training and get a license. We do take action if they ignore us and we take more aggressive action against third parties who conduct trainings that are not authorized by us and people counterfeiting our products.”
The company is also diligent about protecting its name—which it made up—from becoming generic.
“We try to do as much as we can internally in ensuring the business units here correctly use the mark,” says Veronick. “We also proactively look at what our instructors are doing and educate them in terms of how they should and shouldn’t use the mark. In that regard, on the Facebook page I mentioned we post messages regarding genericism and how to properly use the trademark. We monitor how students are using it, and we just try to be proactive in terms of reaching out to people to drive home the point that it is important to use the trademark in a non-generic fashion.”