Law of Cards: Recent Panini, UD Trademark Applications a Matter of (Clearance) Opinion

Law of Cards: Recent Panini, UD Trademark Applications a Matter of (Clearance) Opinion

In the legal world, there’s something called a Clearance Opinion. This is where an attorney determines whether or not a product or trademark infringes someone else's intellectual property. It's how a company looks before it leaps and, therefore (hopefully), avoids legal hurdles down the road. Given the number of articles I've written about lawsuits and legal conflicts in the trading card world, I've wondered, does the trading card world know about Clearance Opinions?

Two recent trademark filings give mixed answers.

The first trademark application is from Panini for CLASSICS for "Sports trading cards," and claims a first use in commerce of 2009. The CLASSICS application is narrower than most of Panini’s trademark filings (which claim the trademark in any font, design, etc.) because it (likely) only seeks to protect the design of the CLASSICS mark:

2012 13 Panini Classic Signatures logo 260x120 Image

Now, I initially tweeted that Panini had little chance of getting this mark. That's because the Trademark Office report on this mark is vague as to whether Panini filed for just the word CLASSICS, or the specific design above. Actually, it's not vague. It's missing information. Whether that's the Trademark Office or Panini's fault is not that big of a concern, because Panini can fix the filing. As the filing stands, it's too broad and will run into a lot of problems because other trading companies have used the world Classics before Panini's first-use date. Just a few include 2005-2006 Topps Hardwood Classics, 2004 eTopps Classic and 2004 Upper Deck Sweet Spot Classics.

Actually, now that I compare them, even the script of the eTopps Classic card below, which predates Panini’s 2009 first use in commerce, looks a lot like Panini's Classics script above.

2004 eTopps Classic Baseball Ozzie Smith 214x300 Image

I guess, Panini's mark is going to run into problems anyway.

So, while I think Panini did its homework and got some type of Clearance Opinion, I think the eTopps mark is still a hurdle. But, I congratulate Panini on not trying to get every single use of the word CLASSICS.

The other mark of note from last week is Upper Deck's ENSHRINEMENTS for "trading cards." Upper Deck claims a first use in commerce of June 28, 2005. Unlike Panini’s CLASSICS mark, this one covers every possible design of the word ENSHRINEMENTS.

Upper Deck is likely going to run into problems on this filing. It looks like Donruss (now Panini) had an Enshrinement card in 2003 Donruss Studio Baseball:

2003 Donruss Studio Enshrinement Roberto Clemente 260x184 Image

There's also the fact that In The Game already has a trademark registration for ENSHRINED.

I'd hazard, given these obstacles, Upper Deck did not obtain a Clearance Opinion. If it had, it might have filed for a narrower trademark that might have had a better chance at success. Or maybe it would have let this one go.

So, what’s the future hold for these two trademark applications?

The Trademark Office will likely reject both applications, if it takes into consideration the cards discussed above. Then, Panini and Upper Deck will likely either cut their losses and abandon the marks or try for narrower scope.

In other words, in their current form, neither application should have survived a Clearance Opinion.

However, the Trademark Office did allow Panini’s overly broad LIMITED mark so maybe Upper Deck and Panini are onto something. Maybe my wondering about whether or not the trading card industry knows about Clearance Opinions for trademarks misses the real-world point. Given that the Trademark Office has allowed some overly broad trademark applications in the past, maybe Clearance Opinions for trademarks just aren't necessary, and actually stand in the way of manufacturers securing some valuable intellectual property?

Why not then file for overly broad trademark applications? You just might get them!

I guess then, these two trademark applications will be good test cases to watch.

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.

ebaysmalllogo Image
2214518005454040 1 Image
DeMarcus Cousins 2010-11 Panini Classics Auto RC 348 349 Kings Kentucky
3905904711564040 1 Image
Rob Gronkowski 2010 Panini Classics RC Auto #233 499 Patriots FREE SHIP
2011183661934040 1 Image
2909411907234040 1 Image
12-13 Panini Classics Signatures Base Autograph Pat Verbeek #102
3806714947754040 1 Image
12-13 Panini Classics Signatures Base Autograph Keith Primeau #140
1213911885344040 1 Image
1213927736304040 1 Image
2010-11 Panini Classics Team Colors Ndamukong Suh Auto 25 RC Auto Lions Huskers
1113957321124040 1 Image
2009 10 Panini Classics Taj Gibson Rookie on card Auto 823
3906925333314040 1 Image
Aaron Hernandez 2010 Panini Classics RC Auto #313 499 Patriots FREE SHIP
2213098017064040 1 Image
Rob Gronkowski 2010 Panini Classics RC Auto #308 499 Patriots FREE SHIP
1912320738604040 1 Image
1912320893154040 1 Image
2312901370384040 1 Image
2010 Earl Thomas Autograph Auto Rookie RC Panini Classics 059 399 Seahawks
3604418013554040 1 Image
1309824868214040 1 Image
(G4) 10-11 Larry Sanders Panini Classics #169 AUTO RC #D 270 699
1813986324954040 1 Image
2010 Panini Classics Autograph Auto #107 Antonio Brown RC 374 499 Steelers
« Previous1234
 |  E-Mail | URL
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+.

Leave a Comment: