Under the Trademark Act generic terms are incapable of functioning as trademarks. A generic term is a word that the relevant purchasing public understands primarily as the common name for a particular product or service. According to Fish’s client Full Circle United, LLC (Full Circle), the word “skee-ball” is the common name for the game of skee-ball, which has been an American boardwalk and arcade pastime for over a century.
In 2011, Full Circle, which organizes skee-ball competitions across the country, was sued by SBI, Inc., a manufacturer of skee-ball machines, and owner of the federal trademark registration of “skee-ball,” for infringement of the term “skee-ball.” Full Circle countered by filing its own complaint alleging that SBI has no rights in the word “skee-ball” because, just like many other marks that have come and gone, such as yo-yo, trampoline, and pilates, skee-ball is generic. Full Circle also filed a Petition to Cancel SBI’s trademark registration in the Trademark Trial and Appeal Board.
John T. Johnson and Kristen McCallion, partners in the firm’s New York office, are handling this case. Kristen was recently interviewed by NPR, and her interview can be heard here.