Law of Cards: Topps Aims to Knockout KNOCKOUTS AND TAPOUTS Trademark

Law of Cards: Topps Aims to Knockout KNOCKOUTS AND TAPOUTS Trademark

Topps is currently on a winning streak when it comes to opposing and cancelling others' trademarks. Recently, it tackled USA Football's HUDDLE mark, and cleared the way for its own HUDDLE mark. Topps also convinced another trademark owner to drop his BLOODLINES application after threatening a trademark opposition. This ensured protection for Topps' UFC BLOODLINES product.

Continuing this trend, on April 30, Topps petitioned the Trademark Office to knockout an individual named Heath Mark Gertridge's KNOCKOUTS AND TAPOUTS registration.

The reason? Topps has been using its trademark KNOCKOUT for the last four years for a line of  UFC trading cards. In 2013, Topps filed for a KNOCKOUT trademark registration. To its dismay, the Trademark Office twice rejected its application in view of Gertridge's already registered KNOCKOUTS AND TAPOUTS trademark.

So, to get its KNOCKOUT registration from the Trademark Office, Topps will, unfortunately, have to knockout Gertridge's KNOCKOUTS AND TAPOUTS registration.

To do this, Topps contends in its recently filed petition that Gertridge's mark should be cancelled because he allegedly is not using it in commerce.

Legal translation: Unlike other intellectual property, if you do not use your trademark in commerce, you could lose it.

This is an interesting approach. Gertridge's trademark dates back to 2007, when he filed his application to cover, "Board games; Card games; Dice games; Promotional game cards; Trading card games." It's unclear if Gertridge currently sells a KNOCKOUTS AND TAPOUTS product, but, he does have a website up and running showing the game in action.  So, technically, he might be using the mark in commerce. And if he can show recent sales (more than a de minimus amount), he might just halt Topps' winning streak.

Gertridge has until June 15, 2014, to respond. I have a feeling, however, that Gertridge no longer sells his product, and therefore, his mark might be deemed abandoned. Or, like with USA Football, there's a chance Gertridge won't show up. If that happens, Topps will win by TKO. Or what I hope would be the best result, would be for Topps to broker a deal to pay Gertridge to voluntarily drop his trademark registration. That way, everyone wins.

But that rarely happens in trading card litigation.

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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+.

User Comments

  1. I say we should all go buy a bunch of Knockouts & Tapouts stuff from this Gertridge feller just to screw with Topps.

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