Law of Cards: An Unlimited Number of Trademark Battles

Law of Cards: An Unlimited Number of Trademark Battles

In 2012, the reoccurring theme of trading card legal filings was "right of publicity." From Buzz Aldrin v. Topps, to Kareem Abdul-Jabbar v. Upper Deck to Leaf v. Andrew Luck …everyone wanted to fight about when it was OK to put an athlete or celebrity’s image on a card without that athlete or celebrity’s permission

Although there were recent rumblings between Leaf and Johnny Manziel about a right of publicity case, the theme of 2013 has changed. Now, the industry is inundated with a seeming unlimited number of trademark battles.

And each escalated in the last week.

Upper Deck Joins the LIMITED Battle

The largest trademark battle in the trading card world is WORLD WAR LTD (TM – Paul Lesko). What started as Panini attempting to register LIMITED as a trademark, has now mushroom-clouded (TM – Paul Lesko) into a battle between all of the major trading card companies. Recently, Topps and Leaf filed oppositions with the Trademark Office to block Panini’s LIMITED filing. Leaf also complicated this matter by filing its own application for a LEAF LIMITED mark.

And now, Upper Deck entered the fray by filing its own application for LIMITED LOGOS.

WORLD WAR LTD (TM – Paul Lesko) has now grown into an UNLIMTED (TM – Paul Lesko) battle.

As someone suggested on Twitter, it’s the Axis v. the Allies (TM – Someone else).

Now, Upper Deck didn’t file an opposition against Panini’s LIMITED mark like Topps and Leaf, but it has entered World War LTD by trying to grab its own toehold in the LIMITED trademark sandbox (TM – Paul Lesko).

Who would have guessed it? Topps, Leaf and Upper Deck versus Panini? Heck, if anyone had thought of that earlier (Wait, I did), they could have trademarked it!

Why didn’t I think of trademarking that?!?!

Upper Deck Escalates the Land Grab Over Precious Metals and Gem

Trading card manufacturers love naming their products and services after precious metals and gems. Platinum, Gold, Silver, Chrome, Titanium, Diamond -- if the metal or rock is worth something, there's likely a trading card named after it.

Maybe there should be a Law of Cards Uranium series (TM – Paul Lesko) about legal issues so radioactive, no one wants to be involved.

Legal translation: Technically, uranium isn't a precious metal because you wouldn't want to wear it, but I bet it's pretty expensive anyway.

Trading card manufacturers also love mining the Trademark Office for precious metal and gem filings. We already had a battle between CHROME and CHROMIUM, and there are filings and registrations for TITANIUM, STERLING, METAL UNIVERSE and BLACK DIAMOND, all of which I guess should be locked in a TOPPS VAULT (TM – Topps, actually).

Well, Upper Deck has continued digging away into the precious metals and gems area with a filing that encompasses both. Last week, it filed a trademark application for PRECIOUS METAL GEMS

Precious metal and gems in the same filing? That’s a little on the nose, right?

This will not be the last gem and metal filing in the industry. Thankfully, everyone has used the more common precious metals like GOLD, so we won't (or shouldn't) see filings on that. But don’t be shocked if someone starts filing on the more esoteric metals and gems.

Can you imagine it? Coming soon: Topps Molybdenum, Upper Deck Aluminum, Panini Ununbium and Leaf Lutetium products and filings!

Legal idea: Panini Ununbium is just too fun to say. Let me throw out a (TM - Paul Lesko) on that one too.

Speaking of bizarre metals, how about Law of Cards Lawrencium (TM – Obviously, Paul Lesko)? It is a metal. Check it out for yourself.

Leaf Files Application for Prismatic

In the final bit of Trademark news, Leaf (finally) filed a trademark application on the term PRISMATIC. This is another assault on Panini’s PRIZM application. And, frankly, a maneuver by Leaf I would have liked to have seen done first.

Legal translation: You don't need to have a trademark registration to initiate a trademark action against someone else, but it helps. Judges and jurors love seeing official documents stamped "approved" by the Patent and Trademark Office. And since cases are the strongest on the day of filing (they only start falling apart from there), it would have been best to start out strong rather than try and make a case stronger, later.

Of all the trademark news, this is really the most non-eventful, but in a busy trademark week, it's still notable.

Summary of TRADEMARK THROWDOWN 2013 (TM – Paul Lesko)

For those manufacturers who found all of the (TM – Paul Lesko's) irritating in this article, that's the point. To the outsider, it looks like if anyone, anywhere comes up with a good idea, they rush to the Trademark Office to try and prevent others from using the term.

Actually, behind the scenes, it’s more of a panic. Everyone is rushing to the Trademark Office out of fear that if they don’t, one of their competitors will beat them to the punch. Which just continues an endless, and escalating cycle, of EVERYONE FILING ON EVERYTHING (TM – Paul Lesko).

That being said, trading card manufacturers…keep doing it! The more you file, the more I have to write about!

And you are also stimulating the economy. More filings means more money to the government in the form of filing fees, plus more money for attorneys to prepare and file (and FIGHT) over the trademarks.

You know what? Maybe that's the point. Maybe trading card manufacturers are the solution to the sluggish economy.

So keep filing. Keeping spending money. And keep me writing!

Legal translation: (TM – Paul Lesko) is a trademark of Paul Lesko.

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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