The first thing I thought when I read about the lawsuit over Brewskee-Ball was why have I not played this game? It involves my favorite boardwalk game, beer, and lots of wonderfully bad puns! The second thing I thought: this is a really good illustration of some basic trademark law concepts. Law professors, take note of this story for a fun exam question.
In case you haven’t heard, Skee-Ball, Inc., maker of the Skee-Ball game we all know and love from the boardwalks and arcades of our youth, has sued Brewskee-Ball, a Skee-Ball league that plays in bars in New York, San Francisco, Austin, and Wilmington, for trademark infringement.
According to Brewskee-Ball’s co-founder, Eric Pavony, he met with the CEO of Skee-Ball in 2005 before he launched the league to share his idea about creating a competitive Skee-Ball league that would be played in bars. According to Pavony, he got Skee-Ball’s approval for the league (and its Brewskee-Ball name) with a handshake and a laugh. But when the league expanded and gained national press attention in 2010, Skee-Ball’s lawyers came calling. First, with a cease-and-desist letter, and later, with this lawsuit.
What’s Good for Business, Can be Bad for Your Trademark
As the case has garnered attention in the popular press, commenters have wondered why Skee-Ball would sue the folks responsible for creating a new market for Skee-Ball-brand game machines in bars around the country. I mean, if this league is responsible for increased sales, why should Skee-Ball care?
Well, trademark lawyers understand, because they know that unless a brand owner takes action to protect its brand against unauthorized use by others, it risks losing trademark protection for its brand. This is true even if the unauthorized use is considered by some to be beneficial to the brand. But a lawsuit is not always the only or best solution. The parties may be able to work out a favorable deal that will both allow the other’s use and maintain trademark protection for the brand.
Your Product Is So Good, The Law Won’t Protect It!
But a brand owner’s failure to prevent others from using its brand without permission is not the only way to lose trademark protection. Trademark lawyers call it “genericide”—death by becoming a generic term. It’s what happens when consumers no longer associate the brand exclusively with the brand owner, but instead, use the brand as the generic name for the product category. Unfortunately genericide can happen even with efforts to protect the trademark. Genericide is what zippers, yo-yos, cellophane, escalators, thermoses, linoleum, and trampolines have in common. All were once trademarks that became generic terms for their product category.
Brewskee-Ball thinks that “Skee-Ball” has suffered the same fate and should join that list. Brewskee-Ball argues that “Skee-Ball,” which has been around for one hundred years, has become the generic term for the game, regardless whether it is a played on a genuine game machine from Skee-Ball, Inc. Not so, Skee-Ball counters, arguing that it has protected its mark over the years and that the Skee-Ball name continues to signify the game machines put out by it alone.
To prove their points, both Skee-Ball and Brewskee-Ball will look for evidence such as media examples of consumers’ use and perception of the “Skee-Ball” name, including advertisements, mentions in popular culture, and mentions in news articles. Consumer surveys could also be helpful. There is no doubt that this fact-finding will require a lot of time, effort, and money.
Approval Is Good, But You Should Get It In Writing
So what could Brewskee-Ball (or Skee-Ball) have done to avoid this lawsuit? Well, when Brewskee-Ball first approached Skee-Ball in 2005, they should have gotten that good-natured approval of their league’s name in writing. A simple license agreement would likely have been easy to work out at relatively little cost, particularly since the league was in its infancy and had not yet attracted so much publicity. This could have been a win-win. Skee-Ball could take advantage of a new way expand the market for Skee-Ball’s game machines. At the same time, it could show adequate policing of its brand and prevent the current genericide threat. And Brewskee-Ball would live another day to spend its money as it should—on pitchers of beer, not lawyers.