The name of 105-year-old game Skee-Ball is a registered trademark. The company that manufactures Skee-Ball machines argues that the Brooklyn bar Full Circle has no right to use it in its Brewskee-Ball championships. (Joel Koyama)
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 holes with different point values—is embroiled in a trademark legal battle with the owners of a Skee-Ball-themed bar in the Williamsburg neighborhood of Brooklyn called Full Circle.
The bar’s owners founded a “Brewskee-Ball” League in 2005 to help popularize the game and draw in 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 in Skee Ball, Inc. v. Full Circle United, 11-cv-04930 in the Northern District of California. 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 in the Eastern District of New York in Full Circle United v. Skee-Ball Inc, 11-cv-5476, claiming that Skee-Ball is a generic term for the game.
In 2012, the two cases were consolidated in the Eastern District and the case is now before Eastern District Magistrate Judge Lois Bloom (See Profile).
Despite a full docket of briefs, the case has not progressed very far in the past three years. But now Full Circle has called intellectual property giant Fish & Richardson to represent it.
“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, could stay the case.
Skee-Ball has asked the board to stay its own proceedings pending the federal case, according to one of its legal counsel, Richard Idell of Idell & Seitel in San Francisco.
Geri S. Krauss of Krauss PLLC in White Plains also represents Skee-Ball Inc.
Idell said while a federal court’s decision is binding on the board, the board’s decision is not binding on the court.
In any event, 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.”
Idell, however, said Full Circle “want[s] to own the skee ball world,” but noted there were other businesses that manufactured so-called “alley roller” or “alley bowler” machines and used the Skee-Ball name, but did so through licensing agreements.
He said his client was a family-run business and not some large corporation. So while he said Skee-Ball wished the best of success for Full Circle in its business, his client was “just trying to protect [its] trademark.”
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 met with the CEO of Skee-Ball Inc. before launching 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. 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. According to the Full Circle website, the national championship of Brewskie-Ball will be held later this month in Austin.
@|Lisa Shuchman is a reporter for Corporate Counsel, an affiliate of the Law Journal. She can be contacted at firstname.lastname@example.org. Law Journal reporter Andrew Keshner contributed to this story.