The “ball” is one of the icons that dominates the world of sports. When my daughter was very young, she referred to baseball as a “sports ball” and she never wanted to play catch, it was always “throw the ball… catch the ball.” In her defense, she was only four years old at the time.
Flash back in time to when she was of legal drinking age and, “if” I remember correctly, when I was somehow invited to a young people’s party, I carefully selected my favorite colored ping pong ball and coached her at beer pong -Game. All of which leads me to discuss some rather interesting trademark concepts highlighted in a recent decision by the United States Trademark Trial and Appeal Board (“TTAB”). With respect to P&P Imports LLC, the TTAB upheld the United States Patent and Trademark Office’s (“USPTO”) refusal to issue the United States Trademark Application Serial No. “An Apparatus for Holding Cups”).
The BREWSKI application was denied due to the existence of US Trademark Registration No. 5549894 (BREWSKI BROTHERS for “sports balls”) and allegations of likelihood of confusion.
Regarding the question of the similarity of the marks, the applicant made a pivot and failed when trying to argue that the two relevant marks are sufficiently different since the “brothers” part of the cited mark BREWSKI BROTHERS was the dominant part. However, in this argument the applicant ignored the fact that the ‘brothers’ part of the cited registered mark had been excluded by the registration proprietor. PRACTICAL NOTE: It is NEVER a good idea to argue that the excluded portion of a cited trademark is the dominant portion. The TTAB considered the two brands to be “very similar”.
Regarding the issue of the relatedness of the goods, the applicant threw a wild punch when arguing that its product could not be used with a sports ball, even though the product itself appeared to be a clever improvement on the game of beer pong by using it the cups don’t move after being hit by an aggressively thrown ping pong ball… keeping the playing field consistently the same for all participants as the intoxicated state of the players progressed predictably. PRACTICAL NOTE: Although it does not appear that the holder of the BREWSKI BROTHERS trademark registration actually used their trademark on table tennis balls, the registration covered “sports balls” which inherently covers all sports balls, including table tennis balls.
Ultimately, the TTAB felt that ping pong balls were related to beer drinking games as ping pong balls are a traditional and popular use in beer pong. In a dispute before the TTAB, where the marks are found to be ‘very similar’ and the goods ‘related’, chances are the TTAB will end up finding a likelihood of confusion.
The applicant also made at least two easily remediable errors of proof. First, the applicant struck out when attempting to enter relevant trademark registrations into the register by merely listing the registrations, rather than using a declaration of trust. This maneuver almost always turns out to be insufficient to get the entries into the evidence. PRACTICAL NOTE: The trust certificate is the applicant’s friend… use it.
Second, the trademark examiner presented a number of trademark registrations containing trademarks covering both drinking games and sports balls. In response, the applicant launched a ball of air when attempting to prove the alleged unrelatedness of the goods by unsuccessfully producing (see First Error above) a number of registrations containing marks for drinking games that did not contain sports equipment, and a number of registrations with markings for sports equipment that did not contain drinking games.
From an applicant’s perspective, when trying to counter evidence of trademark registration relied on by the trademark examiner, the applicant can easily conduct a series of searches for:
- Registrations pertaining to “Drinking Games” only.
- Registrations relating to “Sports Balls” only.
- Registrations that include both “Drinking Games” and “Sports Ball.”
…and then perform a statistical analysis of the total number of registrations that fall into each of these categories. Often the trade mark examiner’s evidence of a few registrations covering both types of goods can look petty when there are hundreds and/or thousands of registrations covering only “drinking games” and/or only “sports balls” and only a few (e.g. , 5) for both types of goods. Had the applicant been able to argue that only 0.10% (or some other insignificant number) of all relevant registrations contained both types of goods, the applicant might have been able to convince the TTAB that the goods for the two marks were unrelated.
Unfortunately, the applicant may have been doomed from the start. The Trademark Examiner served up an ace when it produced evidence for Internet websites showing that sellers of beer drinking games also included ping pong balls… SOLD SEPARATELY, of course.
So is beer pong a sport? Nobody knows. The debate continues.
Long live the SPORTBALL.
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