Law of Cards: Leaf Challenges Panini's Limited Trademark

Law of Cards: Leaf Challenges Panini’s Limited Trademark

Ever since the Trademark Office unbelievably approved Panini's LIMITED trademark application, which, if registered, would give one trading card company domination over the word "limited" in association with trading cards, we've wondered who in the hobby would fight back?

Well, on February 25, a challenger emerged: Leaf Trading Cards.

Leaf's opposition to Panini's LIMITED isn't a surprise. Leaf has its own Leaf Limited product that would be threatened if someone else had exclusive rights to the word "limited." Also, on the same day it filed its LIMITED opposition, Leaf filed another opposition against Panini's PRIZM in view of Leaf's PRISMATIC trademark.

Heck, while you're at the Trademark Office, why not file as many oppositions as you can?

Both the LIMITED and PRIZM oppositions can be considered two sides of the same coin. If Panini gets LIMITED, it could block Leaf from using LEAF LIMITED. However, if Leaf blocks registration of PRIZM, then the Panini's product line is weakened.

Given the risk on both sides, I suspect these oppositions will be settled with cross licenses.

Legal translation: "Hey Panini, if you let me use LIMITED, I'll let you use PRIZM."

The Panini LIMITED filing also shows the slippery slope of just how far into a street fight the industry could fall over this issue. As Brian Gray, President of Leaf, stated in a phone interview, "If Panini gets Limited for a trademark, then I'm going to name products 'Rare' and 'Exclusive' and file for trademarks on those."

Sounds silly, but if words like "limited" can be removed from trading card manufacturers' lexicon, then the industry will need to set up fences around words they deem important. Otherwise, they might be prevented from using them.

Leaf's challenge to LIMITED is two pronged: First, it alleges that LIMITED is merely "descriptive." As such, Panini can only get protection for it if consumers associate that word with Panini's products.

Given the word "limited" is ubiquitous throughout the hobby, that's going to be difficult for Panini.

Leaf's second challenge is that the word "limited" is generic.

Legal translation: Generic words are those commonly used to identify products and services and do not distinguish the source of those products or services. For example, "trading card" and "baseball" are generic words. Since such words are so common and refer to product types, they cannot be trademarks. Otherwise, consumers would be unable to ask for products by name.

This is also a good challenge, but I think the descriptive challenge is the one that'll carry the day.

It should be noted if Leaf wins its challenge, Panini, and the rest of the industry, will still be free to call its products "limited."

For added reading, here's a copy of Leaf's opposition.

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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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