Law of Cards: Trademark Office Rejects Topps Trademark App for -- Topps

Law of Cards: Trademark Office Rejects Topps Trademark App for — Topps

In one of the more amusing trademark actions I've seen, on Augst 19, the Trademark Office rejected Topps trademark application for the word TOPPS.

Legal translation: Yes, although Panini can get the mark LIMITED, Topps apparently can't get the word TOPPS.

In all fairness, Topps does have a number of TOPPS trademark registrations already, but it doesn't have one that covers "clothing." With this particular application, Topps wanted to get, “Clothing, namely, sweaters; one piece garments for infants and toddlers; outerwear, namely, baseball jackets; swimwear, namely, swim shorts and trunks; scarves; hats; caps; footwear.”

Unnecessary legal translation: It covers clothing.

This was important to the examiner's rejection because she believes TOPPS is allegedly just "[a] novel spelling or an intentional misspelling" of the word "tops," which merely describes the applied for goods: clothing.

No, really, I'm not making this up. In the examiner's own words:

A “top” is defined as “a garment worn on the upper body.”…TOPPS is a novel spelling of the term “top” in the plural form.  Since the applicant’s goods include clothing items worn on the upper body and other related clothing items, the term “top” is merely descriptive, if not generic in connection with the applied-for goods.

The trademark examiner is obviously not a collector.

I can't imagine this rejection will stand up. Topps is an iconic name in the trading card industry. If any collector (or just about anyone, for that matter) would see the word TOPPS on a t-shirt, they'd automatically think of the trading card and candy company. This is what's called "secondary meaning," which, legally means, Topps should get a trademark registration.

So, although this rejection is amusing, Topps should eventually get this registration.

Legal aside: One of my astute colleagues pointed out the dangers of this precedent. If it stands, Panini won't be able to get a trademark for sandwiches. Upper Deck won't be able to get a trademark for stadiums and boats. Leaf won't be able to get that coveted trademark for plants and trees!

On the bright side, while Topps will have to spend more money on its legal team to get this mark, it should thank the Trademark Office, because it gives Topps a new area of expansion: ironic t-shirts.

Legal aside: I guess every time I've worn my Topps shirt from the 2014 Summit (which I confess, I've worn quite a bit since then), I was unintentionally being an ironic hipster. Who knew?

UPDATE – In response to the Trademark Office’s rejection, on August 25, Topps allowed the examiner to amended its TOPPS application to recite the following “goods and services”: Clothing, namely, one piece garments for infants and toddlers; outerwear, namely, baseball jackets; swimwear, namely, swim shorts and trunks; scarves; hats; caps; footwear

Legal translation: What this amendment does is basically remove “tops.”

I guess, you can say Topps’ TOPPS application for clothing no longer covers tops.

Because the examiner approved this amendment, she also approved the application, so it looks like Topps will get its TOPPS application for clothing.

It’ll cover Topps. It just won’t cover tops.

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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+.

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