Law of Cards: Recent Panini, UD Trademark Applications a Matter of (Clearance) Opinion
In the legal world, there’s something called a Clearance Opinion. This is where an attorney determines whether or not a product or trademark infringes someone else's intellectual property. It's how a company looks before it leaps and, therefore (hopefully), avoids legal hurdles down the road. Given the number of articles I've written about lawsuits and legal conflicts in the trading card world, I've wondered, does the trading card world know about Clearance Opinions?
Two recent trademark filings give mixed answers.
The first trademark application is from Panini for CLASSICS for "Sports trading cards," and claims a first use in commerce of 2009. The CLASSICS application is narrower than most of Panini’s trademark filings (which claim the trademark in any font, design, etc.) because it (likely) only seeks to protect the design of the CLASSICS mark:
Now, I initially tweeted that Panini had little chance of getting this mark. That's because the Trademark Office report on this mark is vague as to whether Panini filed for just the word CLASSICS, or the specific design above. Actually, it's not vague. It's missing information. Whether that's the Trademark Office or Panini's fault is not that big of a concern, because Panini can fix the filing. As the filing stands, it's too broad and will run into a lot of problems because other trading companies have used the world Classics before Panini's first-use date. Just a few include 2005-2006 Topps Hardwood Classics, 2004 eTopps Classic and 2004 Upper Deck Sweet Spot Classics.
Actually, now that I compare them, even the script of the eTopps Classic card below, which predates Panini’s 2009 first use in commerce, looks a lot like Panini's Classics script above.
I guess, Panini's mark is going to run into problems anyway.
So, while I think Panini did its homework and got some type of Clearance Opinion, I think the eTopps mark is still a hurdle. But, I congratulate Panini on not trying to get every single use of the word CLASSICS.
The other mark of note from last week is Upper Deck's ENSHRINEMENTS for "trading cards." Upper Deck claims a first use in commerce of June 28, 2005. Unlike Panini’s CLASSICS mark, this one covers every possible design of the word ENSHRINEMENTS.
Upper Deck is likely going to run into problems on this filing. It looks like Donruss (now Panini) had an Enshrinement card in 2003 Donruss Studio Baseball:
There's also the fact that In The Game already has a trademark registration for ENSHRINED.
I'd hazard, given these obstacles, Upper Deck did not obtain a Clearance Opinion. If it had, it might have filed for a narrower trademark that might have had a better chance at success. Or maybe it would have let this one go.
So, what’s the future hold for these two trademark applications?
The Trademark Office will likely reject both applications, if it takes into consideration the cards discussed above. Then, Panini and Upper Deck will likely either cut their losses and abandon the marks or try for narrower scope.
In other words, in their current form, neither application should have survived a Clearance Opinion.
However, the Trademark Office did allow Panini’s overly broad LIMITED mark so maybe Upper Deck and Panini are onto something. Maybe my wondering about whether or not the trading card industry knows about Clearance Opinions for trademarks misses the real-world point. Given that the Trademark Office has allowed some overly broad trademark applications in the past, maybe Clearance Opinions for trademarks just aren't necessary, and actually stand in the way of manufacturers securing some valuable intellectual property?
Why not then file for overly broad trademark applications? You just might get them!
I guess then, these two trademark applications will be good test cases to watch.
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