Last week, Panini filed its trial brief in the opposition Topps brought against its LIMITED mark. This is the brief where Panini explains its position in detail, and identifies its evidence.
In a nutshell, Panini contends its LIMITED mark is suggestive and not merely descriptive of Panini's identified goods.
The difference between "suggestive" and "descriptive" is important for Panini's legal argument/defense/position. A suggestive mark is more likely to be registered. Merely descriptive marks, on the other hand, need "secondary meaning" to gain registration. In other words, when consumers hear LIMITED they should automatically think "Panini."
Legal comment: There's little to no chance of the Trademark Office agreeing that LIMITED has "secondary meaning." When a trading card purchaser hears the word "limited" in conjunction with a trading card, he or she thinks there is a finite number of cards available. They don't think "Panini!"
Now, to understand Panini's analysis we need to know what "suggestive" means and how it's different from "descriptive." And here's a first: Panini's brief provides a definition. So, here's the first guest "legal translation" in Law of Cards:
Panini's legal translation: A mark is suggestive if it "requires imagination, insight and perception to reach a conclusion as to the nature of the goods." Suggestive terms differ from descriptive terms, which convey an immediate idea of the qualities or characteristics of the goods.
OK, that's not so clear. No more "guest legal translations."
Real legal translation: A suggestive mark hints at a quality or characteristic of the product, but you need a little imagination to get there. For example, I'd say Topps' CHROME trademark is suggestive. Topps' trading cards are not made from chrome metal, but they are shiny. And chrome metal is shiny. Hence the mental leap. Had Topps named its Chrome products "Shiny," on the other hand, that'd be descriptive.
Legal aside: Please, please, please trading card manufacturers, do not file a trademark on "Shiny!" I know you want to but don't!
Panini then follows its "definition" with this legal gobbledygook that it's trying to pass off as reasoning:
Panini's mark LIMITED could therefore never be purely descriptive of sports trading cards, given that LIMITED is neither specific nor immediately telling in a descriptive sense of the goods offered by Panini. The mark LIMITED as used by Panini is vague and indirect when it comes to describing the products to which it is applied.
Legal comment: I disagree. The word "limited" is not "vague and indirect." Panini's reasoning, however, certainly is.
I've written quite a few times that Panini will not get a LIMITED registration, and nothing I saw in Panini's brief before it yanked it from the public eye would change my mind. The word "limited" is commonly used in an industry somewhat obsessed with production runs. It means the "limited" card is finite in quantity, or more finite than other cards.
Hence, it is "limited" in number.
Trading card consumers know this. There's nothing "vague and indirect" about it and it does not require "imagination, insight and perception." It's plain English.
Timing-wise, what's next for this case? In a couple weeks, Topps will file another brief, and then there will be a hearing set, then about a year from now, there should be an order.
Which hopefully will hold that there are no limits on using "limited" in association with trading cards.
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