Reminder of Old Lessons from Brewskee Ball Dispute

Brewskee Ball leagues are active in major metropolitan markets around the country. The League has been in a well publicized battle with the owners of the Skee-Ball mark.

Lesson number 1. The rule of thumb I give clients is that when it involves intellectual property, if it isn’t in writing, it might as well not have happened. Federal law generally provides that rights in intellectual property can only be conveyed in writing. This case is a textbook example. According to the media reports, before launching the league in 2005, the league’s creator  says he met with the CEO of Skee-Ball, Inc. outside Philadelphia.

“He [Skee-Ball’s CEO] gave us [the league] his full blessing to start the league and he kind of chuckled when we said, ‘Hey, can we call it Brewskee-Ball?’ ” Pavony says. “He said, ‘Yeah, of course.’ We shook on it. And we got the good times rolling.” The informal oral agreement was never reduced to a written agreement such as a trademark license or coexistence agreement. Now they are being sued for using the mark without permission.

Lesson number 2. One of the defenses being raised by the BrewSkee Ball League is that the mark is generic and no longer serves as a mark. Essentially, they argue that it is recognized by the public as a general type or style of game and not a particular brand of a game. There is no other term used to refer to the game, rendering it a generic term rather than an indication of source. Trademarks can be “genericized” when they are not policed by the trademark owner. It is important that trademark owners (1) enforce their mark when used by others, (2) use trademark licenses to maintain control over use of the trademark by others, and (3) be sure that the mark is always used correctly by employees and third parties (as an adjective, not a noun or a verb).

Lesson number 3. Sometimes an application for a trademark brings opposition, especially if your mark is seen as a derivative of another mark. Although sleeping dogs were lying for several years, your increased efforts to protect your name may “force” them to action and oppose your application for registration. Then you have to decide how badly you want to fight for the name, and have a pocketbook to back it up. Playing chicken rarely works in this situation.

These are old lessons, but it always good to reminded what happens when we don’t follow the rules.