Law of Cards: Panini Defends Its LIMITED Mark

Law of Cards: Panini Defends Its LIMITED Mark

Last week, Panini filed its trial brief in the opposition Topps brought against its LIMITED mark. This is the brief where Panini explains its position in detail, and identifies its evidence.

In a nutshell, Panini contends its LIMITED mark is suggestive and not merely descriptive of Panini's identified goods.

The difference between "suggestive" and "descriptive" is important for Panini's legal argument/defense/position. A suggestive mark is more likely to be registered. Merely descriptive marks, on the other hand, need "secondary meaning" to gain registration. In other words, when consumers hear LIMITED they should automatically think "Panini."

Legal comment: There's little to no chance of the Trademark Office agreeing that LIMITED has "secondary meaning." When a trading card purchaser hears the word "limited" in conjunction with a trading card, he or she thinks there is a finite number of cards available. They don't think "Panini!"

Now, to understand Panini's analysis we need to know what "suggestive" means and how it's different from "descriptive." And here's a first: Panini's brief provides a definition. So, here's the first guest "legal translation" in Law of Cards:

Panini's legal translation: A mark is suggestive if it "requires imagination, insight and perception to reach a conclusion as to the nature of the goods." Suggestive terms differ from descriptive terms, which convey an immediate idea of the qualities or characteristics of the goods.

OK, that's not so clear. No more "guest legal translations."

Real legal translation: A suggestive mark hints at a quality or characteristic of the product, but you need a little imagination to get there. For example, I'd say Topps' CHROME trademark is suggestive. Topps' trading cards are not made from chrome metal, but they are shiny. And chrome metal is shiny. Hence the mental leap. Had Topps named its Chrome products "Shiny," on the other hand, that'd be descriptive.

Legal aside: Please, please, please trading card manufacturers, do not file a trademark on "Shiny!" I know you want to but don't!

Panini then follows its "definition" with this legal gobbledygook that it's trying to pass off as reasoning:

Panini's mark LIMITED could therefore never be purely descriptive of sports trading cards, given that LIMITED is neither specific nor immediately telling in a descriptive sense of the goods offered by Panini. The mark LIMITED as used by Panini is vague and indirect when it comes to describing the products to which it is applied.

Legal comment: I disagree. The word "limited" is not "vague and indirect." Panini's reasoning, however, certainly is.

I've written quite a few times that Panini will not get a LIMITED registration, and nothing I saw in Panini's brief before it yanked it from the public eye would change my mind. The word "limited" is commonly used in an industry somewhat obsessed with production runs. It means the "limited" card is finite in quantity, or more finite than other cards.

Hence, it is "limited" in number.

Trading card consumers know this. There's nothing "vague and indirect" about it and it does not require "imagination, insight and perception." It's plain English.

Timing-wise, what's next for this case? In a couple weeks, Topps will file another brief, and then there will be a hearing set, then about a year from now, there should be an order.

Which hopefully will hold that there are no limits on using "limited" in association with trading cards.

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, Simmons Hanly Conroy 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 Simmons Hanly Conroy. 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.

Top eBay Listings

2014 Limited Partnership Asa Watson JimmyGaroppolo Stevan Ridley 75 Jersey
$10.50

2005-06 SP AUTHENTIC - MATT STAJAN #95 LIMITED PARALLEL 100!!
$11.99

1989-90 Score MLB Baseball's 100 Hottest Rookies Cards Set - Limited Edition
$5.99

2001 TOPPS LIMITED EDITION #400 WILL CLARK PSA 10 B1535566
$16.99

2014 Panini Adrenalyn World Cup EXCLUSIVE Andres Iniesta Limited Edition MINT
$9.99

13 14 Panini Adrenalyn Champions League EXCLUSIVE Franck Ribery Limited Edition
$5.99

2008 Leaf Limited Derrick Mason Jumbo Jersey Auto Sp (2 5)
$49.99

2000 TOPPS LIMITED FACTORY SEALED SET 619 CARDS
$69.99

SHAQUILLE SHAQ O'NEAL 2000-01 SPX SPECTRUM GOLD CARD #37 LIMITED EDITION # 22 25
$120.00

scott rolen 2004 leaf limited auto jersey #11 50
$50.00

TOPPS BUNT DIGITAL LIMITED RYU - ONLY 99!
$19.99

1994 LEAF LIMITED #88 FRED McGRIFF BRAVES PSA 10 B1535731
$5.99

2014 Limited Game Day Materials #14 Dexter McCluster 99 Jersey
$5.60

2013 TERRANCE WILLIAMS PANINI LIMITED AUTO AUTOGRAPH PATCH ROOKIE RC COWBOYS 49
$29.99

2014 Limited #27 Andrew Luck 399
$5.60

AARON KELLY (2) Auto Lot 2009 Bowman Sterling 57 75 and Limited 222 399 FALCONS
$11.01
« Previous1234

 |  E-Mail | URL
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+.

Sorry, comments for this entry are closed at this time.