Law of Cards: The Battle For LIMITED Control Continues
I'm still amazed that there's a fight at the Trademark Office over who can use the word LIMITED in the sports trading card world.
The battle started with Panini's filing of a "standard character mark" trademark application for the mark LIMITED for "sports trading cards."
Legal translation: This trademark application covers all usages of the mark LIMITED in regards to "sports trading cards." It is not limited to any specific design, font or style.
Unnecessary legal translation of legal translation: If the word LIMITED is printed on a baseball card, or even on advertising for baseball cards, it's likely covered.
Unbelievably, the Trademark Office approved Panini's filing.
Legal translation: I say unbelievably because "limited" is commonly used in the hobby to describe cards (e.g., "limited edition," "limited to 10," "extremely limited in quantity," etc.). The Trademark Office is not supposed to hand out trademark registrations for terms that are merely descriptive. To obtain a trademark registration for a descriptive term, it must have acquired secondary meaning (in other words, when consumers see the word "limited," the first thing that pops into their head is, "Panini").
And LIMITED has not acquired secondary meaning. At the time of writing this article I received thousands of results from an eBay search in "Sports Mem, Cards & Fan Shop" for "Cards" only, when I searched for "limited –panini." In theory, this search should have limited the results to non-Panini trading cards listings with the word "limited" somewhere in there. If Panini and LIMITED were linked in the minds of the consumer, there should not have been thousands of cards from other manufacturers as results.
Anyway, after Panini's LIMITED was unbelievably approved by the Trademark Office, Topps took it upon itself to defend the entire trading card industry, and filed an opposition with the Trademark Trial and Appeal Board (TTAB).
Legal aside: Technically, Topps filed an opposition to ensure that it could continue to use the word LIMITED. However, a Topps win will inadvertently help the rest of the industry. So, I guess, Topps would be the unintentional savior of the industry if it wins.
The Topps opposition has been dragging on since March 15, 2013, and only this week did we finally get a glimpse into Topps' theme, argument and evidence.
In its trial brief, Topps highlighted the issue for the TTAB:
By attempting to register "limited" as a trademark for sports trading cards, Panini seeks to monopolize a word that describes the very essence of the trading card industry. As a manufacturer and seller of trading cards, Panini is well aware that rarity drives the sports trading cards business and that production of trading cards in limited quantities is a common strategy of the trading cards manufactures , including Panini itself, to enhance the product value. Panini’s assertion that the mark is "suggestive" ignores the fact that in the context of sports card trading business, "limited" has only one meaning, i.e., that certain cards are produced in "limited or restricted quantities", thus leaving no room for consumers to think of alternative interpretations of "limited".
Topps then proceeded to identify the evidence that the TTAB should consider in rejecting Panini's LIMITED application. Some of the more noteworthy included:
1) Topps offered LIMITED products such as 2001-2002 Topps Major League Baseball Limited Edition sets and 2000 Topps Major League Baseball Limited Edition inserts,
2) Topps and other trading card companies frequently used the term "limited" in sales and promotional materials for sports trading cards (including an admission by Panini’s own witness, Martin Welling, an executive with Upper Deck for 18 years, who testified that Upper Deck used LIMITED during the relevant time period),
3) Panini's evidence of past use during the relevant time period is really for LEAF LIMITED and not LIMITED by itself,
4) In Topps own words, "Panini's sales figures are unimpressive," and
5) In Topps own words, "Its expenditures on promotion are trivial."
Legal aside: I can't believe Topps missed the opportunity to tell the TTAB that Panini's LIMITED sales and promotional expenses are "limited" too.
Topps also relied on a slew of other evidence, including dictionary definitions, articles and advertisements of decreasing value. I mean, one of the advertisements it relies upon states, "Limit one per person; while supplies last…"
Legal aside: Topps probably could have lived without this one. If the fact that all manufacturers use the word "limited" frequently won't persuade the TTAB to reject Panini's application, then an advertisement stating, "Limit one per person" certainly won't matter either.
Next up in the opposition is Panini's brief. If it's not filed under seal (or if it does not obtain an extension of time) we'll see that in 30 days. Topps then can reply to Panini's brief 15 days after that. Then the case will be ready to go, right?
No. We'll still have to wait for the TTAB to set a hearing. And after that hearing, we'll wait for an eventual order. Then, we'll wait for Topps or Panini to file the inevitable appeal to a district court. And then, we can watch as the whole process starts over again.
Yes, the battle for LIMITED might go on for an unlimited time.
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