Law of Cards: Panini’s FLAWLESS Filing Mired in Flawed Process
Panini's attempt to obtain a FLAWLESS trademark registration to protect its ultra high-end products is not proceeding flawlessly.
On October 18, 2013, Panini filed a trademark application for FLAWLESS. At the time, I figured Panini would have a difficult time winning a trademark registration. When most card collectors think "flawless" they think card condition. Most probably do not think of a relatively new Panini product line. The word "flawless" then (in the trademark lingo) is descriptive of the quality of trading cards.
Since "flawless" is descriptive, Panini can only obtain a trademark registration if it can prove the term has obtained "secondary meaning."
Legal translation: Consumers have to mentally connect the word "flawless" with Panini, and not just as a generic description of any manufacturers' card's quality.
Given this, I figured the Trademark Office would reject the FLAWLESS application.
It turns out that was looking too far into the future, because the FLAWLESS application hasn't progressed that far. In fact, it hasn't progressed at all.
The Trademark Office put a hold on Panini's application. Apparently, a company named Conopco beat Panini to the Trademark Office with a trademark filing for FLAW-LESS that covers, among other things, "Games, namely, card games…sports games playing cards."
So, there's flaw one: you're not going to get FLAWLESS if you aren't first.
In the eyes of the Trademark Office, trading card applications and card games/sport games/playing card applications are related. This is what gave rise to Topps' battle to obtain a registration for KNOCKOUT (for "trading cards"), which the Trademark Office blocked in view of KNOCKOUTS AND TAPOUTS (for "Board games; Card games; Dice games; Promotional game cards; Trading card games").
Like the "knockout" marks, the Trademark Office believes the two "flawless" marks are too closely related to coexist. And since Conopco's filing beats Panini's by a-year-and-a-half, the Trademark Office decided it'd address Conopco's filing first and later, maybe, it'd return to Panini's.
After a couple years of fighting, Conopco convinced the Trademark Office that it was entitled to its FLAW-LESS registration, which led us to last week's action: Panini took an offensive approach (sort of), and filed a request to extend the time in which to oppose Conopco's FLAW-LESS mark.
Legal translation: Instead of formally opposing Conopco's FLAW-LESS mark, Panini asked for more time to consider whether or not it wants to file an opposition.
Panini likely took this less aggressive approach to enter into negotiations to see if Conopco would agree to eliminate everything having to do with "cards" in its application, thereby ensuring no overlap between FLAW-LESS and FLAWLESS.
It's unclear whether Conopco would be amenable to this. It's not readily apparent why Conopco wants this trademark. Conopco's FLAW-LESS filing is an "intent to use" application, which means it hasn't launched a product yet. However, considering that most of the "goods and services" on its application focus more on software having to do with photo editing, it might be able to live with Panini's proposed amendment.
Then again, it might not. Conopco is a huge trademark filer, so it might want as broad of a registration as possible. You might better know them as Unilever, and would recognize some of its other trademark registrations like POPSICLE, DOVE, I CAN'T BELIEVE IT'S NOT BUTTER, FUDGSICLE and CREAMSICLE.
Yeah, it's a frequent trademark filer.
There's a second: if you're going to try to get someone to drop or change their trademark filing, don't pick on someone much larger and with a lot more trademark experience than you.
The Trademark Trial and Appeal Board has given Panini three months to either work out a deal with Conopco or to file a full-blown opposition, so we'll just need to watch and wait to see what happens here.
But the frustrating point for Panini has to be that even if Conopco agrees to amend, Panini will still have to later fight with the Trademark Office to prove "secondary meaning." So, a win here, does not mean Panini will get a FLAWLESS registration.
It just means it'll finally get to begin the process -- one year later.
And if Panini does convince the Trademark Office it should get FLAWLESS, this is another mark, like LIMITED, that I would expect another manufacturer (or heck, maybe even a trading card grader) would oppose. Because if Panini gets a registration, it can almost control who in the industry can call cards, "flawless."
So at best, Panini has two more battles it'll need to overcome if it overcomes Conopco.
And that's flaw three: don't get stuck in a series of trademark battles you'll never win.
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