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Beer Pong is a Sport?

The “ball” is one of the icons that dominates the world of sports.  In fact, when my daughter was very young, she referred to baseball as “sports ball” and she never wanted to play catch, it was always “throw the ball…catch the ball.” She was, in her defense, only four years old at the time.

Flash-forward-in-time to when she was of legal drinking age and, “if” I recall correctly, when at a party of young people I was somehow invited to, I carefully chose my favorite-colored ping pong ball and schooled her in the game of Beer Pong.  All of this leads me to discuss a few somewhat interesting trademark concepts highlighted in a recently issued decision by the United States Trademark Trial and Appeal Board (“TTAB”).  In  In re P&P Imports LLC, the TTAB upheld the refusal by the United States Patent and Trademark Office (“USPTO”) to register United States Trademark Application Serial No. 88915014 (BREWSKI for “equipment sold as a unit for playing drinking games comprised of an apparatus for holding cups”).

The BREWSKI application was denied based on the existence of United States Trademark Registration No. 5549894 (BREWSKI BROTHERS for “sports balls”), along with an allegation of Likelihood of Confusion. 

In regard to the issue of the Similarity of the Marks, the Applicant took a swing and missed while trying to argue the two relevant marks were sufficiently different because the “brothers” portion of the cited BREWSKI BROTHERS mark was the dominant portion.  However, when making this argument, the Applicant ignored the fact the “brothers” portion of the cited registered mark had been disclaimed by the owner of the registration.   PRACTICE POINTER:  it is NEVER a good idea to argue the disclaimed portion of a cited registered trademark is the dominant portion.  The TTAB held the two marks were “very similar.”

In regard to the issue of the Relatedness of the Goods, the Applicant threw a wild pitch when it argued its product could not be used with a sports ball even though the product itself seemed to be a clever improvement on the game of Beer Pong by keeping the cups from moving after being hit by an aggressively thrown ping pong ball….thereby keeping the playing field consistently the same for all participants as the inebriated state of the players progressed predicably.  PRACTICE POINTER:  Even though it does not appear the owner of the BREWSKI BROTHERS trademark registration actually used its mark on ping pong balls, the registration covered “sports balls” which inherently covers all sports balls, including ping pong balls. 

Ultimately, the TTAB held that ping pong balls were related to beer drinking games because of the traditional and popular use of ping pong balls when playing Beer Pong.  When arguing in front of the TTAB, and when the marks are held to be “very similar” and the goods are held to be “related,” the chances are quite good the TTAB will ultimately find a likelihood of confusion. 

The Applicant also made at least two easily fixable evidentiary errors.  First, the Applicant struck out when, instead of using a Notice of Reliance, the Applicant attempted to enter relevant trademark registrations into the record by merely listing out the registrations.  This maneuver is almost always found to be insufficient to make the registrations part of the evidentiary record.   PRACTICE POINTER:  The Notice of Reliance is the Applicant’s friend….use it.

Second, the Trademark Examiner submitted a set of trademark registrations showing marks covering both drinking games and sports balls.  In response, the Applicant launched an air ball when it tried to show the alleged unrelatedness of the goods by unsuccessfully presenting (see First error above) a set of registrations showing marks for drinking games that did not include sporting equipment, and a set of registrations showing marks for sporting equipment that did not include drinking games. 

From an Applicant’s perspective, and when trying to counter trademark registration evidence relied upon by the Trademark Examiner, the Applicant can quite easily conducting a series of searches for:

  • Registrations that only cover “drinking games.”
  • Registrations that only cover “sports balls.”
  • Registrations that cover both “drinking games” and “sports ball.”

…and then conduct a statistical analysis of the total number of registrations falling into each of these categories.  Often the Trademark Examiner’s evidence of a few registrations covering both types of goods can be made to look petty if there are hundreds and/or thousands of registrations covering just “drinking games” and/or just “sports balls” and only a few (e.g., 5) covering both types of goods.  If the Applicant had been able to argue that only 0.10% (or some other inconsequential 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. 

Alas, perhaps the Applicant was doomed from the outset.  The Trademark Examiner served up an ace when presenting Internet website evidence showing sellers of beer drinking games also featuring ping pong balls….SOLD SEPARATELY, of course. 

So, is Beer Pong a sport?  Nobody knows.  The debate continues.

Long live the SPORTS BALL.

Tags: Sports and Recreation
  • Gary J. Nelson
    Partner

    Gary Nelson is a partner in Lewis Roca's Intellectual Property Practice Group. Clients turn to Gary for prosecution and maintenance of large international corporate trademark portfolios, particularly in the fashion and clothing industry. He also specializes in resolving intellectual ...

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