Law of Cards: Panini’s PREFERRED, CLASSICS Marks Rejected by Trademark Office
It's no secret I was disappointed when the Trademark Office's granted Panini's LIMITED trademark. The industry was too as it spawned two oppositions against the mark by Topps and Leaf, one of which (Topps) is still ongoing.
The dangers of an overly broad trademark application is that one member of an industry could potentially control a word or phrase. That wouldn't matter for words and phrases linked to certain companies like BOWMAN (Topps), ELITE EXTRA EDITION (Panini) or GOODWIN CHAMPIONS (Upper Deck). For those marks, consumers would not be confused. They know which companies the trademarks reference.
But words like LIMITED -- to a consumer, it could mean anything.
Given that background, it's good to learn the Trademark Office is taking a stronger stance against Panini's PREFERRED and CLASSICS trademarks. Both were rejected this week.
Panini's PREFERRED trademark application is not limited to a specific design. It covers PREFERRED in any typeface, font, etc. In essence, it's Panini's attempt to control the word PREFERRED.
Panini, however, is unlikely to get a registration on this mark because the Trademark Office rejected it as being "merely descriptive."
Legal translation: A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. And you can't get a trademark registration for a "merely descriptive" mark unless it acts as a source identifier (in other words, when you hear it, you think Panini).
In its rejection, the Trademark Office stated:
he term PREFERRED is laudatory because it is merely describing the character or quality of the goods, namely, that the particular sports cards are PREFERRED or wanted more than any other, presumably because of the caliber of player on the card.
Where was that reasoning from the Trademark Office for LIMITED? It would have been nice if the Trademark Office killed the LIMITED registration for this same reasoning before Leaf and Topps had to hire attorneys to try and kill the mark themselves.
Anyway, given this rejection, I doubt Panini will get a PREFERRED registration. But, I've been wrong before.
Also, why does Panini want a trademark for PREFERRED? It's like trademarking I KINDA LIKE THIS ONE BETTER or JUST BETTER THAN THE NEXT GUY or B- or C+.
Panini should be happier with the rejection of its CLASSICS mark. The CLASSICS trademark application doesn't cover every use of the word CLASSICS. It's limited to a specific design:
Given this, the Trademark Office told Panini it can obtain a registration on the CLASSICS design provided Panini "disclaim the descriptive wording 'CLASSICS' apart from the mark as shown."
Wait, Panini can get a CLASSICS trademark so long as it disclaims CLASSICS?
Really, it just means that Panini is confirming the application doesn't cover the word CLASSICS.
This is a potential victory for Panini, but, not so fast. The Trademark Office missed a prior trademark that I think could give Panini trouble.
As I previously wrote, the biggest challenge to this application should be the eTopps CLASSIC design.
The eTopps CLASSIC mark looks a lot like Panini's CLASSICS design.
So, Panini, sorry to bring this up, but you might want to submit the eTopps card to the Trademark Office to make sure your mark is fully vetted. That would be a preferred course of action. Otherwise, you might face another CLASSIC opposition from Topps.
Bad jokes yes, but they show Panini should not control either of these words (or the word LIMITED too).
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James McCay
Paul,
I’ve been fighting hobby fraud for free since 1992. You may have heard (good or LIES) about Cardcop online; that’s me.
How is it that eBay sellers are continually being allowed to sell all kinds of ILLEGALLY Reprinted sports cards including serial numbered Certified Autograph Inserts of TOM BRADY now???
I’ve called eBay & filed complaints against the biggest sellers of illegal reprints for 3-YEARS now (that DO NOT say reprint anywhere, they are EXACT copies). eBay tells me “You are correct, these cards are NOT allowed on eBay and they will be removed and the seller will be punished.”. YET THEY NEVER ARE!
I even contacted card companies Legal Dept.’s, Player Associations, MLB Properties & the sports themselves & still NOTHING IS DONE???
That worked ONCE a full 3-years ago. But less than 6-months later all the Reprint sellers returned & this time FEARLESSLY listing each card IN BULK. Then cardthemostexpensdiveRCReprints& finally RC CertifiedOn CardAutographswith lowserial numbers (the same serial number sold in the thousands!).
I caught a PSA 10 1986-87 Fleer Michael Jordan RC Reprint (off-center 65/35 left to right just like most reprints- and PSA put NO QUALIFIER???) plus EVERY key Reprint red flag, plus many others I found).
I contacted Upper Deck Legal first who owns the licensing rights to all Fleer cards. The next day someone bought it, but it didn’t say who. So I thought it was Upper Deck, BUT THEN THE CARD WAS RETURNED & the same seller relisted it. This is a $31,999 card & I’m 100% sure it’s a good Reprint!
Next I contacted the Chicago FBI twice (they now handle ALL art fraud including sports cards). The 1st person I got didn’t sound very interested- the2nd person DID & had me file a complaint with ICE (I didn’t know they handled sports card fraud either, but they do!).
Item #283615611119
IT SOLD AGAIN ON 10/13/19 TO A NEWBIE BUYER (which was what I was afraid of)… whoever this is left POSITIVE FEEDBACK.
The quality of these Reprints are getting BETTER AND BETTER so no one can tell the difference!
James aka Cardcop
James