First published March 3, 2011.
When I saw Sergiy Sivochek’s post about the PING PONG trademark, I thought it sounded familiar — and it is! Pamela Chestek and I swatted it back and forth down in the comments of this doohickey a while back. Seems that maybe, perhaps, the matter of whether PING PONG really functions as a trademark will be settled?:
I guess we will have to wait and see whether Ping Pong is destined to join the company of Yo-Yo, Aspirin and all other genericised trademarks, or if Escalade Sports will be able to steer the mark away from the danger. We might not even have to wait for long before getting some answers as Escalade Sports recently sued a Delaware corporation, Sandman Table Tennis LLC, over the mark. (The complaint can be viewed here.) Given that Escalade Sports is aggressively asserting its rights to Ping-Pong, I will not be surprised if Sandman attempts to defend itself by raising the genericism issue. That is, of course, if the case does not get quietly settled first.
I’d be surprised if they relied on anything but genericness (not” genericism,” at least in my book — that’s like a philosophy or religion of genericness, I think — and isn’t that already called something?) as a defense. I’d also be surprised if, as Sergiy acknowledges, this little misunderstanding isn’t privately resolved well before that happens, as I explained in my volley back to Pamela.
Some of the “best” trademark rights are the ones that are never quite proved to be enforceable, after all.
UPDATE: Complaint was filed on January 19, 2011. Voluntarily dismissed on undisclosed terms, per PACER, nine days later. No surprise there. What’s far more interesting is this:
A year later, it was Sandman suing the International Table Tennis Federation (ITTF) in a dispute over the phrase WORLD CHAMPIONSHIP OF PING PONG! The ITTF, see, runs the WORLD TABLE TENNIS CHAMPIONSHIPS. All caps, see. Because trademark.
How you figure? Trying to wade through the assignments on file with the PTO is pretty hopeless, but it’s a declaratory judgment action. The ITTF, in fact, was rattling its saber at Sandman which had, as you would expect, ended up licensing the “Ping Pong” from Escalade rather than fight over whether it was really a trademark.
Now, however, Sandman was in the unhappy position of having to defend against a motion for summary judgment in which the ITFF asserted that it was no defense to the alleged infringement of WORLD TABLE TENNIS CHAMPIONSHIPS by WORLD CHAMPIONSHIP OF PING PONG to rest on some distinction between “table tennis” and “ping pong” — even if you were suckered into licensing “ping pong” as a trademark (citations to the record omitted):
Sandman can be expected to argue that its event name is different on two grounds: that “table tennis” is somehow not the same as “ping pong,” and that in their event name “World” and “Championship” are consecutive whereas ITTF puts the words “Table Tennis” in between in certain event titles. Neither attempted distinction has any merit.
As for “table tennis” vs. “ping pong,” these are simply two names for the same thing. Tellingly, Sandman itself uses the terms “table tennis” and “ping pong” interchangeably. In a news item about young and rising “table tennis prodigies,” posted by Sandman on its worldchampionshipofpingpong.com website, Sandman writes, “[n]ow ping-pong (or table tennis) needs a face.” Similarly, in what amounts to an admission that Sandman intends to confuse the public, it states in its Complaint that it seeks to use the “World Championship of Ping Pong” name for its event “so that consumers will immediately understand, that the WCPP Event features the best table tennis players from around the world.” Public reference sources identify the terms as synonyms. Merriam-Webster.com, http://www.merriam-webster.com/dictionary/ping-pong (last visited Oct. 31, 2011) (“Ping-Pong-used for table tennis”); Dictionary.com, http://dictionary.reference.comlbrowse/ping+pong (last visited Oct. 31, 2011) (“Ping Pong: table tennis”). The terms “table tennis” and “ping pong” are used interchangeably in domestic media as well. For example, coverage on CBSNews.com of Dorothy DeLow, a 100-year-old participant in ITTF’s 2010 WORLD VETERAN TABLE TENNIS CHAMPIONSHIPS, was headlined:” I 00-Year-Old Ping Pong Star.” Recent coverage of the Chinese Olympic table tennis team in Reuters was headlined “Olympics-China plan ping pong charm offensive.” Nancy Franklin, in an extended piece on the sport for the New Yorker in 2003 subtitled, “Ping-Pong: It’s a whole new ballgame,” discussed much of the history of the sport of table tennis, including the ITTF, ITTF’s WORLD CHAMPIONSHIPS and many of the United States’ former world champions. The term “ping pong” diplomacy is still widely used to refer to the interactions between the U.S. and China in the early 1970s, though these events began at the 1971 WORLD TABLE TENNIS CHAMPIONSHIPS.
This would appear pretty devastating — presumably, the icing on the cake (held in reserve for the reply brief) in support of this argument was this post as originally published in 2011. Humble as ever, I have not downloaded that. But here’s the thing: This argument was coming from the folks who were trying to assert trademark rights in the words “World Table Tennis Championships.”
Not all caps, really. Registration notwithstanding, that sounds pretty much like a championship event for table tennis. Not like a trademark thing. Doesn’t it?
Poor Mr. Sandman!
Well, anyway, as I said in 2011, some of the “best” trademark rights are the ones that are never quite proved to be enforceable. After both sides had their say, this case was settled:
Sandman… Sandpaper? Whatever. Still not a trademark. None of ‘em.