Law of Cards: Does Panini's Filing Against Leaf Hint at Possible Resolution?

Law of Cards: Does Panini’s Filing Against Leaf Hint at Possible Resolution?

One of my favorite professions to rant against is weather forecasters. What drives me crazy about this alleged profession is when they make predictions like "100 percent chance of rain" or "no chance of rain" four days in advance -- and are then are then proven 100 percent wrong.

I'm sorry, predicting either 100 or 0 percent means that the event either will happen or will not. There is no middle ground. Don't they teach them that in weather school?

When I make my forecasts in the legal field I make sure to include wiggle room, even when I'm 100 percent confident. Take for example Leaf's LEAF LIMITED trademark filing. On July 23, the Trademark Office published LEAF LIMITED for opposition. This opened a 30-day window in which others could challenge the mark.

Given that Leaf and Panini are already engaged in many battles, including a battle over Panini's LIMITED trademark application, I predicted Panini would oppose the LEAF LIMITED mark. I even wrote:

Panini has until August 22 to start yet another Panini v. Leaf matter. Given how much these companies love suing the other, you can count on it being filed by then.

Oh wait, did I say, "you can count on it being filed by then"? Yikes! That sounds like a 100-percent prediction.

Well, apparently I was very confident about this fact on July 25.

But there was nothing to worry about. On August 22, Panini made my prediction come true by filing a request for an extension of time to oppose Leaf's trademark application.

OK, technically, Panini did not file an opposition. It filed a request for an extension to file an opposition. However, to do so, Panini did create another Panini v. Leaf matter and that's technically what I predicted.

Legal translation: I am a lawyer, proficient in the art of wiggle words and post hoc justifications. So, sue me.

But really, for a prediction made four weeks out, I think I did OK.

Panini's opposition only asked for an extension until September 21. This leaves it three possible courses of action:

1)    Panini could file an opposition,

2)    Panini could file another request for an extension of time, or

3)    Panini and Leaf could resolve the case, and it'll be dismissed.

But which will it follow?

Quite often parties file motions for extensions because they need additional time to assess the merits of the case. Trademark oppositions are complicated affairs involving multiple, amorphous factors that need to be weighed against each other to determine whether or not there's a "likelihood of consumer confusion."

Legal translation: Yes, not only does the analysis focus on "confusion," it's confusing to explain.

Because of this, it's not always easy to determine in 30 days whether or not the case can be won.

I don't think that's the case here.

Panini's LIMITED trademark application covers all usages of the mark LIMITED on (or in association with) trading cards. The existence of LEAF LIMITED defeats the purpose of Panini’s mark. Because of this, I don't think Panini needs more time to assess whether or not this is a good case for it to file.

Also, Panini only asked for 30 days. It's more customary to seek 60 days to fully assess a case. It doesn’t make sense then that Panini will file for another extension of time when it could have asked for more time in the first place and didn't.

Maybe then,and here's a difficult prediction, Panini and Leaf are in talks to wrap up not only this this case, but all their cases.

Rather than file an opposition to LEAF LIMITED, it's certainly easier and less expensive for Panini to request a 30-day extension of time to see where the talks are going, and if they go well, to obviate the need for the opposition filing.

Plus, if you're going to wrap up three to four cases, that does take a little bit of time.

Which gives rise to the next part of my prediction: Panini and Leaf will settle all of their matters by Sept. 21. In doing so, I believe the LEAF LIMITED action will disappear (likely with Leaf abandoning this application), Leaf will dismiss its oppositions against LIMITED and PRIZM, and Panini will dismiss its VALIANT/CRUSADE copyright complaint against Leaf.

This is a big prediction with a lot of moving parts and a high degree of specificity, so, to not run afoul of my rant against weather forecasters, I'm only giving this prediction a 60 percent chance of success.

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.

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Paul Lesko is a shareholder at Simmons Hanly Conroy and the chair of its Intellectual Property Department ( 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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