Law of Cards: Topps and Panini's Heavy Metal Battle - UPDATE

Law of Cards: Topps and Panini’s Heavy Metal Battle – UPDATE

UPDATE 6/1/12: In a further move to protect its intellectual property, Topps just filed trademark applications for three of its mainstay products (HERITAGE, STERLING and TRIBUTE). This move is most likely in response to Panini's CHROMIUM application being too close to CHROME. Topps still does not have a CHROME filing, but, I expect it'll get one on file soon (maybe as soon as the Panini CHROMIUM opposition is over).

It's finally here, the heavy metal battle everyone's been waiting for: Topps v. Panini!

OK, it's not a battle of the bands, and there's no music, feathered hair or guitar riffs. But a battle did just break out between Topps and Panini over chrome and chromium. Actually, over who gets the registered trademarks for these metals within the card industry.

As I previously wrote, Panini originally announced that 2011 Limited Baseball product would contain "Chromium" cards for some of the set's autographs. To prepare for this release, Panini filed two trademark applications: one for "Chromium" and one for "Panini Chromium."

Panini's trademark filings indicate that it thinks Chromium will be more than a one-hit wonder.

On the other side of the stage, both Topps Chrome and Bowman Chrome are some of Topps' greatest hits. According to Topps' filing, they've been on the charts since 1995. Topps, then, is not too happy with Panini's attempt to register Chromium and Panini Chromium.

So, to protect its registered marks, on May 21, Topps filed an opposition to both of Panini's marks.

Legal translation: Topps is asking the Trademark Office to not register Panini's marks because they're too close to Bowman Chrome (and Topps Chrome). It's Topps' position that if the Trademark Office allows Panini to register these marks, it could lead to consumer confusion as to whether the Chromium marks are associated with Panini or with Topps.

In its notice of opposition Topps alleges that Panini "chose the marks CHROMIUM and PANINI CHROMIUM for its directly competitive goods with full awareness of Opposer's well established trademark rights, in a conscious attempt to appropriate the goodwill of Opposer's well known trademark CHROME, and to deceive people into believing that products are made by, or sponsored, endorsed or licensed by Opposer."

Legal translation: Topps alleges Chromium is trying to get a free-ride on Bowman Chrome's rep.

So, who is going to win?

This opposition is actually two battles (over Chromium and over Panini Chromium), and could have two different results. In fact, I think Panini's filing for two trademark applications is telling. If I had to guess, the reason Panini filed two applications was because it wanted to hedge its bets. Chromium might be more difficult to obtain, but if you tack Panini in front, that registration is more winnable.

The first battle will be over Chromium, and Topps has great arguments here. Bowman Chrome has been an industry icon since it first hit the scene in 1997. It is well-known among collectors. Given that it's a golden oldie, it's very likely when consumers amd fans hear "Chromium" by itself in reference to trading cards, they are very likely to believe they're hearing about a Bowman or Topps product.

Panini does have an interesting argument in response. It sounds like this, "Metals are common in trading cards. Everyone's products have gone gold (Panini Gold Standard, Topps Gold Rush, Topps Gold Sparkle, etc.) or platinum (Topps Platinum, Panini Certified Platinum, etc.). Even Leaf even has plain old Metal cards. Not to mention, there's Bowman Sterling, etc. So it's unfair to give Topps a monopoly on one metal when everyone else shares the rest."

It's an interesting argument, but ultimately, I think it'll boil down to when a card collector says "Chrome" or "Chromium," very likely, only one company pops into mind: Topps.

Mind you, Topps would be in a stronger position if it had a registration just for Chrome. But, that's hindsight. Although I wouldn't be shocked if we see a trademark filing for Chrome by itself from Topps soon.

Legal translation: Hey Topps, file a trademark application for CHROME. What do you have to lose?

Now, Panini Chromium may have a different beat. By putting Panini in front of Chromium, it helps alleviate any confusion that might exist as to whether the product is associated with Topps or Bowman. If someone says "Panini Chromium," the first thought in the mind of a consumer is not "Is this a Bowman or Topps product?" It's "I guess Chromium is a Panini product."

Because of this, Panini Chromium is a stronger application, and whether it wins will turn on expert testimony and evidence.

Legal translation: Topps' expert will croon that 1) CHROME is the most famous mark in the trading card industry and 2) when anyone utters "Chrome" everyone knows that it refers to Topps/Bowman. Panini's expert on the other hand will sing 1) Chrome is a minor mark in the industry, and 2) just about everyone says "Bowman Chrome" or "Topps Chrome" together, there's no solo act for "Chrome" by itself. So if someone says just "Chrome" by itself, most consumers think you are referring to Google Chrome or something else, and not Bowman or Topps Chrome cards.

Given just the straight arguments, I give the advantage to Topps. But, since this evidence will get in through expert testimony, it'll really depend on which expert testifies the best. If Panini gets a rock star expert, don't be surprised if Panini Chromium is its one hit single (its one win out of its two applications).

What should not be lost here is that this heavy metal battle is over registrations. Unless (and until) Topps files a trademark infringement lawsuit, Panini is free to use Chromium and Panini Chromium with its products.

But, I have a funny feeling we might not see a lawsuit. 2011 Limited Baseball product released a couple weeks ago, and it does not appear to have Chromium cards, at least by name.

If I had to guess what happened, Panini likely received a cease and desist letter from Topps and decided to pull the Chromium product from this release to avoid a trademark infringement lawsuit.  However, since its Chromium trademark applications were already on file, it wanted to test the waters to see if maybe it could use Chromium in the future (if it won at the Trademark Office).

You know Topps and Panini, if there was a lawsuit I'd have more to write about. And think about all the puns! I mean beyond heavy metal there's Chroman the Cardbarian, Chrome-magnon Man and probably lots more. So, think about it. Please?

It's early in the trademark proceedings, so we'll have awhile to wait until something happens. Oppositions like this can take a long time. I'm involved in one now that's been ongoing for more than three years. And that's before the encore of the inevitable appeal!

But like all cases, my guess is this one will settle. Panini could easily spend a lot of money (rock star experts are not cheap) fighting for trademarks for potential products it may never release. So if it's not too invested in this name, it might be best to just drop these trademarks now and move on to another genre, away from heavy metal. Like, maybe, hip hop. Although, don't they also have a Platinum League release too?

Jeez, there's metal in trading cards everywhere nowadays.

 Click here to download a copy of the Topps 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+.

User Comments

  1. Dunno what’s become of this, but I gotta disagree that people would associate “Chromium” with Topps’ “Chrome” lines. I have never heard any of Topps’ Chrome sets referred to as Chromium in any way, shape, or form. Not one time. I dunno if that means anything, but even to a noob who might not know any better, a quick chat with a seasoned vet on twitter or wherever online or at their lcs or whatever would permanently reconcile which branding belongs to which company.

    That said, no company should get chrome or chromium, or any other common-ish word outright though. The company name should have to be a part of it. Otherwise silly semantical nonsense like this happen. :)

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