Is Ping-Pong At Risk of Joining Yo-Yo?

28 Feb

What is the name of the game in which two players use paddles to hit a small hollow ball back and forth across a table divided by a net?  Did you say Ping-Pong?  If you did, it means two things.  First, you are an American.  Second, your answer is wrong, at least technically. The true name of the game is table tennis, which is how the game is known throughout the world. 

Regardless of the true name of the game, however, you were hardly alone if you answered Ping-Pong. I have heard quite a few people giving the same answer, and even Wikipedia’s article on table tennis starts as follows: “Table tennis, also known as ping-pong…”  The question then is why the game that is referred to as table tennis in other countries has become known as Ping-Pong in the United States. What’s the story?  Did people in the U.S. randomly chose the term “ping-pong” for some obscure reason, similar to how the word “soccer” was chosen to name the game which in most other countries is known as “football”?  It turns out, the story of Ping-Pong is quite different. 
 
Ping-Pong is actually a trademark which has been federally registered in the United States since the early 20th century.  (See U.S. Reg. Nos. 283,767283,766; and 520,270.)
 
 
The mark was originally owned by the famous Parker Brothers and was subsequently acquired by Escalade Sports, which is still using the mark in the United States in connection with table tennis equipment. What happened to the Ping-Pong mark through its long history and success in the marketplace is that the mark became so well known that many people have come to believe the game itself is called Ping-Pong. 
 
You would think the ongoing misconception about Ping-Pong is great for Escalade Sports. After all, it seems logical to assume that consumers will be more likely to buy Ping-Pong paddles if they believe those paddles are required to play the game they think is called Ping-Pong.  There is just one problem with this picture, however; with every new consumer who starts equating “Ping-Pong” with “table tennis,” the former comes one step closer to becoming just a generic term, a dictionary word with no more legal protection than the words “table tennis.” Why? The reason lies in the trademark law doctrine of genericness, which I will very briefly explain below for those readers who do not spend their days dealing with trademark law.
 
The genericness doctrine can be roughly boiled down to the following: If a trademark becomes synonymous with a general class of product, that mark loses its ability to identify a source of such product and therefore becomes a generic term, a dictionary word that anyone can use for whatever purpose, with no recourse left to the original owner of the mark.  You do not have to look far to find many examples of once-proud trademarks that have fallen into the genericism trap.  Aspirin, Yo-Yo, Escalator, Linoleum, Zipper, Thermos, Kerosene, even Heroin; the list goes on and on. 
 
I do not know how close Escalade Sports may actually be to losing its Ping-Pong mark to genericness, but it seems the company itself recognizes the danger. Look for example at this passage from the company’s website:  
 
What is the difference between Ping-Pong® and Table Tennis?
 
Ping-Pong® is a federally registered trademark first developed by Parker Brothers, Inc. and now owned by Escalade Sports. The registered trademark Ping-Pong® indicates a brand of equipment used to play the sport of table tennis.
 
Ping-Pong® is the brand and table tennis is the sport. Have you ever wondered why Ping-Pong® is not in the Olympics? The Olympics Committee uses the term correctly – table tennis is the sport played in the Olympics! All the industry associations relating to the sport are table tennis associations, again recognizing that the sport is table tennis.
 
There are several other manufacturers of table tennis tables, but only one genuine Ping-Pong® brand of table tennis tables and equipment.
 
The above message was clearly designed to remedy the public’s misperception regarding Ping-Pong. Such efforts are quite similar to the educational campaign that another company, Xerox, launched some time ago upon realizing that “xerox” was becoming generic through inappropriate use by consumers. (Do you remember times when your boss would routinely ask you to xerox a document?) You may have seen those numerous educational ads that Xerox put out there trying to persuade consumers to “photocopy” rather than “xerox” documents.  If have not seen those ads by Xerox, you can see one of them below.
 
 
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 genericized 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 genericness issue. That is, of course, if the case does not get quietly settled first.
 
In the meantime, the last time a friend asked me to play a game of table tennis with him, what he actually mouthed was “Let’s play ping-pong.”  We played a nice game, while my kid was standing next to me playing Yo-Yo.