Law of Cards: Owner of KNOCKOUTS AND TAPOUTS Trademark Looks to Tapout

Law of Cards: Owner of KNOCKOUTS AND TAPOUTS Trademark Looks to Tapout

In the hopes of obtaining a KNOCKOUT trademark registration, last April, Topps petitioned to cancel heath Mark Gertridge's KNOCKOUTS AND TAPOUTS registration. Topps' basis, basically, was that it believed Gertridge no longer used his mark in commerce. If true, this would allow the Trademark Trial and Appeals Board to quickly cancel Gertridge's mark, and clear the way for Topps' KNOCKOUT mark.

Legal translation: "We think he's not using it, so he should lose it. And because we're using it, we should get it."

Unfortunately for Topps, Gertridge answered Topps' cancellation and claims he still uses his trademark in commerce.

The response bars an easy win for Topps. Now instead of showing "abandonment," Topps would have to show there is no "likelihood of confusion" between KNOCKOUTS AND TAPOUTS and a KNOCKOUT mark even though both marks appear on trading cards.

A likelihood of confusion analysis is a lot more complicated, requires experts and surveys, and would cost Topps a lot more time and money than simply filing documents showing "he no longer sells KNOCKOUTS AND TAPOUTS products."

Fortunately for Topps, later in his answer Gertridge capitulates to coexistence of both marks:

I add that in my opinion the trademarking of the word KNOCKOUT on its own is not an infringement of my mark of KNOCKOUTS AND TAPOUTS, nor would the trademarking of the word TAPOUT by an infringement on my mark of KNOCKOUTS AND TAPOUTS. My trademark is KNOCKOUTS AND TAPOUTS. It is not KNOCKOUT, and it is not TAPOUT. Those singular words on their own are not an infringement on my mark. They are common use words in the English language and my trademark is not intended to stop anyone from the use of those words individually on any product even if it happened to be a product in the same categories as my own. I believe that the Petitioner's Application to register KNOCKOUT was refused in a laudable act in attempt to protect my intellectual property rights. However, I have no issue with Petitioner being granted registration of the mark KNOCKOUT. I further have no issue with them using it for any category of goods.

Legal translation: There's room enough in the world for both of our marks!

Given Gertridge's "tapout," Topps' cancellation should end quickly, likely with a co-existence agreement between Gertridge and Topps.

Don't lose the irony here. Both trademarks cover professional fighting. Topps started a battle to cancel Gertridge's marks with its own brand of professional fighters (lawyers). Yet despite this, this dispute looks to end with peaceful coexistence.

Maybe these fighters then can show the rest of the trading card world how to get along with each other.

Yeah right.

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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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