Law of Cards: Panini Limited Trademark Approval an Error?

Law of Cards: Panini Limited Trademark Approval an Error?

Within the Law of Cards column, I use legal issues that arise in the trading card industry to explain how the legal system works. Now, articles on topics like these assume a foundation that sometimes is lacking: that the legal system always follows its own rules.

I'm sure it'll shock no one that sometimes it doesn't.

A good, recent example of this is Panini's LIMITED trademark application.

In June 2012, Panini filed a trademark application on the mark LIMITED for "sports trading cards." I believe Panini's intent was to prevent other "sports trading card" manufacturers from naming their products "Limited." However, trademarks are broader, and a registered trademark for LIMITED arguably could be broad enough to prevent others from printing the word "Limited" on sports trading cards.

Legal aside: Sure, this is an extreme position that Panini likely will not take, but law schools teach attorneys to spot all potential issues. And this is a potential issue.

Unbelievable to me, the Trademark Office approved Panini's application.

Legal aside: Given the vast collection of "limited" cards that have appeared in the industry for years and years, from many different manufacturers, I thought this one had no chance.

After approval, the Trademark Office published Panini's trademark.

Legal translation: After a trademark is "published," anyone who feels it might trespass on their rights can file an "opposition." This forces the trademark owner to prove to the Trademark Trial and Appeal Board that it is entitled to the registration.

Two trading card manufacturers filed two separate oppositions against Panini's LIMITED application: Leaf and Topps.

Now, Leaf and Panini were engaged in a slew of other legal disputes, and somehow resolved them all within one settlement agreement. In doing so, Leaf dismissed its opposition.

That left Topps' opposition, which according to the Trademark Trial and Appeal Board docket, is still pending today.

So, following "the rules," since there is still an opposition pending, Panini can't receive its registration.

Apparently not! On November 11, the USPTO registered the LIMITED mark. It is Reg. No. 4430921. This officially makes Panini the proud new owner of a LIMITED trademark, despite a pending opposition.

Legal translation: What the? Unless the Trademark Office website is wrong because of some type of digital hangover from the government shutdown or spillover from the Obamacare website, this should not have happened.

To make it clear, I don't think the Trademark Office ignored its rules or that Panini knows someone there. I have to believe that the registration was issued in error, and I can even see how it happened: A supervisor saw the Leaf/Panini opposition was dismissed, assumed it was the only one, so he hit the "Issue" button on his computer…and voila. Panini was the proud owner of a LIMITED registration.

I'm willing to bet that the situation will soon be resolved, with the LIMITED registration number getting yanked, and the Topps opposition continuing.

But, until then, technically Panini owns a LIMITED registration. So, trading card manufacturers, delete the word LIMITED from your spell checker! If you use it, you might be open to liability.

I also have to hope that LIMITED was registered in error because in my predictions for 2013 I wrote, "There is NO WAY Panini gets a LIMITED registration in 2013." Jeez, I would hate to be wrong on that when I was just a month away from being correct.

I think it's time for me to file trademarks for "Exclusive," "New," "Autograph," and "Baseball Card." Heck, I just might get them, even if it's just accidentally, and for a limited amount of time.

The information provided in Paul Lesko's "Law of Cards" column is not intended to be legal advice, but merely conveys general information related to legal issues commonly encountered in the sports industry. This information is not intended to create any legal relationship between Paul Lesko, the Simmons Browder Gianaris Angelides & Barnerd LLC or any attorney and the user. Neither the transmission nor receipt of these website materials will create an attorney-client relationship between the author and the readers.

The views expressed in the "Law of Cards" column are solely those of the author and are not affiliated with the Simmons Law Firm. You should not act or rely on any information in the "Law of Cards" column without seeking the advice of an attorney. The determination of whether you need legal services and your choice of a lawyer are very important matters that should not be based on websites or advertisements.

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Paul Lesko is a shareholder at Simmons Hanly Conroy and the chair of its Intellectual Property Department (http://www.simmonsfirm.com). Don’t hold the fact that Paul is a lawyer against him, he’s also a rabid baseball and college basketball fan, and an avid baseball card collector. Paul can be found on Twitter @Paul_Lesko and Google+.

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