Arcade games conjure up images of amusement parks and family fun, but there’s nothing amusing about the courtroom battle that’s been brewing over the 105-year-old game Skee-Ball.
The company that manufactures Skee-Ball machines—the game in which players roll a ball up an inclined lane, trying to make it bounce into various holes that correspond to different point values—is embroiled in a trademark legal battle with the owners of a Skee-Ball-themed bar called Full Circle, located in the Williamsburg neighborhood of Brooklyn, N.Y.
The bar’s owners founded a “Brewskee-Ball” League in 2005 as part of an effort to popularize the game and draw patrons. They claim to now have hundreds of regular players in Brooklyn, San Francisco and Austin.
But in 2011, Skee-Ball Inc. sued Full Circle United LLC for trademark infringement. The name “Skee-Ball” is a registered trademark, and the company is arguing that Full Circle has no right to use it. Full Circle filed a countersuit, claiming that Skee-Ball is a generic term for the game. In 2012, the two cases were consolidated in the Eastern District of New York.
Despite a full docket of briefs, the case hasn’t progressed very far in the past three years. But now Full Circle has called in the big guns: intellectual property giant Fish & Richardson is representing them. “They came to us in part to get things moving,” said Kristen McCallion, a Fish partner who specializes in trademark, copyright and other IP issues. “They also were looking for a new perspective.”
Last week, McCallion and Fish partner John Johnson filed a petition with the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office to cancel Skee-Ball Inc.’s trademark registration. The TTAB process, which can take a little more than a year to complete, will stay the case, which is pending in district court.
But the issue in both venues is the same: Is Skee-Ball a generic term that describes a sport or should it remain a protected mark?
“It’s not a protectable trademark because there’s no other word to describe Skee-Ball,” McCallion said. “Under trademark law, if a noun identifies a common name for something and not a source, then it’s not protected.”
This is not a new issue: Kleenex is a source; tissue is the generic term. Xerox is a source; photocopy machine is the generic term. Even Ping-Pong identifies a source, while table tennis is the generic term, McCallion said.
“But what would be the generic term for Skee-Ball?” she asked. “We’ve given it a lot of thought and there really isn’t one.”
Legally, Skee-Ball Inc. actually has no choice but to mount a fight if it wants to prevent its trademark from officially becoming a generic term. When a company fails to protect a mark, the law says it becomes a generic term. In fact, zipper, aspirin and heroin are examples of trademarks that lost their secondary meaning and became “genericized” in the U.S.
Eric Pavony, co-owner of the Brewskee-Ball league, says he actually met with the CEO of Skee-Ball Inc. before he launched Brewskee-Ball in 2005 and received permission to start the league and use the name. Then in 2010, the company sent him a cease-and-desist letter demanding the league stop using the name Brewskee-Ball; the lawsuit followed. Most trademark fights settle, but this one doesn’t look like it will end any time soon.
McCallion said she doesn’t know how much money is at stake. But the services of an Am Law 100 law firm generally don’t come cheap. Pavony, who calls himself the “Skee.E.O.” of the Brewskee-Ball league, has launched a crowdfunding campaign, hoping to raise money to pay for his legal fight.
Meanwhile, the Skee-Balls keep rolling.