Law of Cards: Panini's PREFERRED, CLASSICS Marks Rejected by Trademark Office

Law of Cards: Panini’s PREFERRED, CLASSICS Marks Rejected by Trademark Office

It's no secret I was disappointed when the Trademark Office's granted Panini's LIMITED trademark. The industry was too as it spawned two oppositions against the mark by Topps and Leaf, one of which (Topps) is still ongoing.

The dangers of an overly broad trademark application is that one member of an industry could potentially control a word or phrase. That wouldn't matter for words and phrases linked to certain companies like BOWMAN (Topps), ELITE EXTRA EDITION (Panini) or GOODWIN CHAMPIONS (Upper Deck). For those marks, consumers would not be confused. They know which companies the trademarks reference.

But words like LIMITED -- to a consumer, it could mean anything.

Given that background, it's good to learn the Trademark Office is taking a stronger stance against Panini's PREFERRED and CLASSICS trademarks. Both were rejected this week.

Panini's PREFERRED trademark application is not limited to a specific design. It covers PREFERRED in any typeface, font, etc. In essence, it's Panini's attempt to control the word PREFERRED.

Panini, however, is unlikely to get a registration on this mark because the Trademark Office rejected it as being "merely descriptive."

Legal translation:  A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. And you can't get a trademark registration for a "merely descriptive" mark unless it acts as a source identifier (in other words, when you hear it, you think Panini).

In its rejection, the Trademark Office stated:

 [T]he term PREFERRED is laudatory because it is merely describing the character or quality of the goods, namely, that the particular sports cards are PREFERRED or wanted more than any other, presumably because of the caliber of player on the card.

Where was that reasoning from the Trademark Office for LIMITED? It would have been nice if the Trademark Office killed the LIMITED registration for this same reasoning before Leaf and Topps had to hire attorneys to try and kill the mark themselves.

Anyway, given this rejection, I doubt Panini will get a PREFERRED registration. But, I've been wrong before.

Also, why does Panini want a trademark for PREFERRED? It's like trademarking I KINDA LIKE THIS ONE BETTER or JUST BETTER THAN THE NEXT GUY or B- or C+.

Panini should be happier with the rejection of its CLASSICS mark. The CLASSICS trademark application doesn't cover every use of the word CLASSICS. It's limited to a specific design:

Classic-TM

Given this, the Trademark Office told Panini it can obtain a registration on the CLASSICS design provided Panini "disclaim[s] the descriptive wording 'CLASSICS' apart from the mark as shown."

Wait, Panini can get a CLASSICS trademark so long as it disclaims CLASSICS?

Really, it just means that Panini is confirming the application doesn't cover the word CLASSICS.

This is a potential victory for Panini, but, not so fast. The Trademark Office missed a prior trademark that I think could give Panini trouble.

As I previously wrote, the biggest challenge to this application should be the eTopps CLASSIC design.

2004 eTopps Classic Baseball Ozzie Smith

The eTopps CLASSIC mark looks a lot like Panini's CLASSICS design.

So, Panini, sorry to bring this up, but you might want to submit the eTopps card to the Trademark Office to make sure your mark is fully vetted. That would be a preferred course of action. Otherwise, you might face another CLASSIC opposition from Topps.

Bad jokes yes, but they show Panini should not control either of these words (or the word LIMITED too).

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 has litigated intellectual property for over 15 years. 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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