If you’ve been around a Pickleball player (and chances are you have), you’re likely to have heard that it is the fastest-growing sport in America. Enthusiasts range from Brené Brown to Bill Gates, with LeBron James, Tom Brady, and Kevin Durant recently buying professional Pickleball teams.
Or, as a somewhat-less-flattering account described the sport’s players, they are the “lantern flies of the sports world.”
Serving up a brand
In addition to being the name of a wildly popular sport, Pickleball is also a registered trademark. Reg. No. 999043, issued November 26, 1974, covers the mark PICKLE-BALL for the Class 28 goods “equipment including a net, paddles and balls sold as a unit for playing a court-type game and balls sold separately for such game.” The current owner of the registration is OLLA, LLC, which appears to do business as www.PickleballCentral.com.
If you didn’t know PICKLE-BALL was a registered trademark, you aren’t alone. Numerous U.S. trademark applications and registrations exist for marks incorporating the word PICKLEBALL, many of them disclaiming the term “pickleball” as descriptive of the identified goods or services. For example, Selkirk Sports, which sells equipment used to play Pickleball, owns a registration for WE ARE PICKLEBALL for goods in Classes 18, 25 and 28 that includes sporting equipment, bags, and clothing. This registration includes a disclaimer of “pickleball” apart from the mark as a whole. On a sidenote, in 2022, Selkirk successfully opposed another company’s application to register WE ARE PICKLEBALL for athletic shoes – the USPTO did not refuse this identical mark despite arguably overlapping goods identified in Class 25.
To date, neither PickleballCentral.com nor its predecessor has opposed any application that includes “pickleball” as a part of its mark.
The dead ball of genericism
In order to maintain trademark rights, the mark must continue to serve as a signifier of the brand. If the mark becomes the generic name for the type of goods or services, a company can lose its rights to register and enforce the mark. Other sports have faced the dreaded generic label. In 2000, a federal court ruled that PILATES is the generic name for the type of exercise program rather than a brand. Currently, Mad Dogg Athletics is facing petitions to cancel its registrations for SPINNING brought by Peloton, which claims that “spin” and “spinning” are generic for an indoor cycling class.
Just like a well-played third-shot drop challenges Pickleball opponents, the threat of “genericide” can strike fear into the heart of brand owners. While it is relatively rare for a trademark to lose its brand significance, owners can take steps like policing the marketplace and using the brand name together with a generic term, i.e., PICKLE-BALL brand paddles.
If your company is looking for a partner to keep your brand out of the genericism kitchen, Markery Law can rally for you.