Law of Cards: Is a Memorabilia Card Lawsuit Looming?
I routinely check the United States Patent and Trademark Office (USPTO) online database for new trademark filings to try to figure out new sets the card companies are planning.
A recent filing, however, gave me a glimpse not of a new product, but something different. It previewed the possibility of a future lawsuit for the trading card industry.
On October 5, 2011, Media Technology Licensing, Inc. (Media) filed a trademark application for, well, a memorabilia card. The USPTO information on this filing is provided below, and starts off with the figure for which Media is trying to get a federal registration:
| Goods and Services | IC 016. US 002 005 022 023 029 037 038 050. G & S: Baseball cards; Sports trading cards; Trading cards. FIRST USE: 19951231. FIRST USE IN COMMERCE: 19951231 |
| Mark Drawing Code | (2) DESIGN ONLY |
| Design Search Code | 20.03.24 - Bumper stickers; Calendars; Checks, bank; Coupons; Currency; Manuscript paper and sheet music; Menus; Money, paper; Music, sheet; Sheet music; Stickers, bumper; Tickets, paper; Trading cards |
| Serial Number | 85439726 |
| Filing Date | October 5, 2011 |
| Current Filing Basis | 1A |
| Original Filing Basis | 1A |
| Owner | (APPLICANT) Media Technologies Licensing, LLC LIMITED LIABILITY COMPANY CALIFORNIA 344 El Camino Dr. Beverly Hills CALIFORNIA 90212 |
| Attorney of Record | Stephen Holmes |
| Description of Mark | Color is not claimed as a feature of the mark. The mark consists of a memorabilia card having a portion of a game used sports memorabilia piece contained within the card and an aperture cut into the face of the memorabilia card to allow the portion of the game used sports memorabilia piece to be visible through the aperture. The specific shape and location of the aperture in the face of the card are not part of the mark. |
| Type of Mark | TRADEMARK |
| Register | PRINCIPAL-2(F) |
| Live/Dead Indicator | LIVE |
Why is this interesting? The company that filed the trademark application is the same company that originally brought suit against Upper Deck and friends on Adrian Gluck's patent on memorabilia cards. The Federal Circuit, the court of appeals for all patent cases, ultimately killed the patent.
Legal translation of Media's trademark filing: It looks like because its patent was invalidated, Media hopes to receive federal trademark protection on the same concept. If Media receives a trademark, expect it to bring a trademark suit against manufacturers who make memorabilia cards.
This is not typical behavior. Patents cover inventions. Trademarks cover marks or things that call to mind the owner of that mark. Like, when you see this, what do think of?
Exactly. That's a trademark for where I'm getting my breakfast tomorrow morning.
Now, when you see the below drawing, what do you think of?
My first thought was an iPod. But that's obviously wrong (but might be a good trademark for Apple to obtain).
My second thought, once I saw it was a trading card, was that the picture was of a memorabilia trading card with the dotted lines representing the cutout so collectors could see the memorabilia swatch. But, it did not call to mind any particular trading card company.
It does look like the smallest swatch I've ever seen on a card, though.
Will Media's trademark strategy work when its patent strategy did not? I have doubts. As you can see from the discussion above, Media's mark is not exactly the strongest source identifier.
Legalese translation – When I look at the “mark," it does not call Media to mind.
Also, the Supreme Court in Traffix Devices, Inc. v. Marketing Displays, Inc. held that a feature cannot serve as a trademark "if it is essential to the use or purpose of the article."
Legalese translation - If the feature that is trying to be trademarked is functional (has a purpose other than looking pretty), it can't be protected by trademarks.
Media is trying to obtain a registration on a memorabilia patch, or more particularly, a trading card with a memorabilia cutout. The problem is that it's the cutout that allows the memorabilia to be seen. That's pretty functional.
Most likely then, this will be a difficult registration for Media to get, and then a difficult lawsuit for it to win.
That's too bad for Media. I stated earlier that I thought Media got a raw deal with its patent infringement action. I think they should have won that suit. I'm not alone. The dissenting judge in the opinion that killed the Media patent also thought the memorabilia card patent should not have been invalidated. But he was outnumbered two-to-one by his brethren judges, so his opinion didn't carry the day. And in the eyes of the law, my opinion matters even less than an outnumbered judge.
If Media does get a registration, then I wouldn't be too surprised to see Upper Deck drawn into yet another lawsuit, especially because Media already had Upper Deck in its sights in Media's failed patent infringement action. As if Upper Deck doesn't have enough legal issues.
Of course, that depends on Media dodging all the USPTO's arrows in getting its trademark registration. All it takes is one USPTO arrow to kill its chance at getting a federal registration.
Media should take comfort though. It is okay if it doesn't ultimately get a registration. If it is serious on its trademark claim, technically, it does not need the federal registration to file a trademark suit. It just helps.
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Bob Brill
Adrian Gluck, who once paid me to speak on his behalf, is a patent freak. He has patented some of the most stupid stuff and then tried to sue someone else. His whole demeanor seems to be inside this patent circle. He actually convinced some companies to pay him a royalty for the “game used” cards when the inventor of game used was actually Victor Shaffer who started it all with Press Pass Racing. Remember “burning rubber” cards and before that race used lugnuts? Adrian you should be ashamed of yourself again.