In a ruling I have been eager to see, the Trademark Trial and Appeal Board (TTAB) decided yesterday that Panini is not entitled to a trademark registration for the word LIMITED.
Legal translation: Topps (and the industry) wins! You're free to continue putting the word "limited" on trading cards!
I've been writing about this issue for years. It started with Panini applying for a mark on LIMITED (which I loudly proclaimed it would not get). It then received approval from the Trademark Office (which baffled me, but I still loudly proclaimed it would eventually die). Then Topps took a stand against Panini on this issue by filing an opposition with the TTAB.
And finally, the TTAB killed Panini's LIMITED application.
Legal aside: Until the appeal, of course.
The TTAB summarized the issue as:
Applicant seeks registration of the word "limited" that is, at the very least, highly descriptive of sports trading cards. The exclusivity of such cards is at the core of the sports trading card industry; the production of cards in limited quantities is an industry practice, thereby enhancing the product value to collectors. The rarity of cards drives the sports trading card business. In the context of the sport trading card industry, the word "limited" immediately describes that certain cards are produced in "limited" quantity or in a "limited edition."…No thought or imagination is required to immediately understand that sport trading cards sold under the designation LIMITED are just that, namely, sports trading cards produced or available in limited quantities.
Because the word "limited" is highly descriptive of trading cards, the TTAB reasoned Panini faced a high burden to show its LIMITED has “acquired distinctiveness.”
Legal translation: In other words, when the word LIMITED is mentioned, all trading card consumers would think, "Oh, that’s Panini."
The TTAB held Panini did not meet this high burden because "consumers are likely to perceive the word 'limited' when used for sports trading cards, not as a trademark for one company, but rather as a common word used by different entities in the industry to describe those cards."
Without the necessary "acquired distinctiveness," Panini can’t win, and its application for LIMITED was denied.
What does this mean for the trading card industry? You can continue to use the LIMITED in association with trading cards.
Obviously though, don't use Panini’s scripted LIMITED mark. And stay away from LEAF LIMITED. But otherwise, you're likely okay.
(And, of course, the above does not constitute legal advice.)
What's next for the future of this case? Panini gets to decide whether or not to appeal this decision. It has two possible routes: it could go right to a court of appeals, or go to a district court. The reason Panini can choose which court should hear the appeal is if it thinks it needs more evidence, it should choose a district court. If Panini thinks the record is complete and it needs no more evidence, it can go straight to the court of appeals.
If Panini appeals, it'll likely take the district court route. In parts of the decision, the TTAB pointed out holes in Panini's evidence and the only way to fill evidentiary gaps is with more evidence.
I'm hopeful that since the TTAB order was not positive towards Panini, Panini will drop the case and not appeal. I mean, check out some of these TTAB quotes:
Although we have considered 's advertising and promotional efforts, 's numbers are hardly impressive, falling far below levels deemed persuasive in other cases involving the acquired distinctiveness of marks.
and
As itself acknowledges, 's use of the word "limited" hardly has been substantially exclusive.
and
objections are not well taken.
and
Accordingly, 's contention that its applied-for mark is not merely descriptive, but rather at worst is only suggestive because it is 'vague and indirect' (Brief, p. 12), is untenable.
and
At bottom, however, we see a fundamental flaw with 's case: we have no direct consumer testimony, no consumer surveys, and no evidence of unsolicited media coverage.
The TTAB sided with Topps throughout this order and not so much with Panini.
So, here's hoping this is the end of the LIMITED saga. And the word LIMITED will be available for others to use in an unlimited fashion.
If you want to check out the TTAB's decision, here's the document.
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