Law of Cards: Upper Deck Wins MASKS Trademark Battle

Law of Cards: Upper Deck Wins MASKS Trademark Battle

Well, the MASKS trademark challenge ended before it could begin.

In late March, Panini's MASKS trademark application was published for opposition. Given that the word "mask" was used by others in the industry on trading cards (e.g, Mask Collection, The Mask, etc.), I predicted someone (likely Upper Deck) would try and defeat it. Otherwise, Panini could control the word "masks" and maybe even "mask" on trading cards.

Soon thereafter, Upper Deck filed a motion to ask for more time to consider whether or not to oppose the mark. This was a cost savings step (it’s less expensive to file a motion like this than to start a full-blown opposition) conceivably to see if Upper Deck could work something out with Panini so that no one would need to waste money. This made sense since the NHL had just selected Upper Deck as its exclusive licensee. Panini likely would not want to fight over a mark which has most of its value tied up in hockey cards.

Upper Deck's strategy worked. Although Panini had until May 10 to make a decision, last week, it abandoned its MASKS trademark application.

This is a good win for Upper Deck, and the industry, because it frees up a commonly used term. Also, along with Topps' LIMITED opposition, it shows the industry is monitoring trademark filings, and any overly broad trademarks will likely be challenged.

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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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