Thursday, February 12, 2015

TTAB Sustains 2(e)(1) Mere Descriptiveness Opposition to LIMITED for Sports Trading Cards

The Board sustained an opposition to registration of the proposed mark LIMITED for "sports trading cards," finding the mark merely descriptive of the goods and lacking in acquired distinctiveness. Although Opposer Topps had not used the term "limited" on sports trading cards since 2002, it remained interested in doing so. Because Applicant Panini sought registration under Section 2(f), it bore the ultimate burden to prove acquired distinctiveness. The Topps Company, Inc. v. Panini America, Inc., 113 USPQ2d 1808 (TTAB 2015) [not precedential].

The Board once again observed that, the higher the degree of descriptiveness of a mark, the higher the burden of proving acquired distinctiveness. By seeking registration under Section 2(f), Panini conceded that the term is not inherently distinctive.

The record was chock-full of articles from printed publications showing use of "limited edition" with sports trading cards. The evidence also showed use of "limited" in names for sets of cards. The Board noted that, "to preserve the collectability of [their] cards, the parties frequently limit the quantity of cards that are released in the market."

The Board concluded that "limited" 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.”

Turning to the issue of acquired distinctiveness, the burden on Panini to prove acquired distinctiveness was "very high." The Examining Attorney accepted Panini's Section 2(f) claim of (purportedly) substantially exclusive and continuous use of the mark in commerce for the five years preceding its claim, and also accepted Panini's unverified claim of sales exceeding $30 million under the LIMITED mark since 2001.The Board, of course, was not bound to concur with the Examining Attorney's action.

Panini asserted that, although numerous third parties have used the term "limited" in a descriptive sense in the sports card industry, it was the only one to use the term in a "branding sense," i.e., as a trademark. The Board, however, pointed out that the Panini's use of the word "limited" has hardly been substantially exclusive. "Given the number of third-party uses, 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." The registration sought by Panini would be "inconsistent" with Topps' right to use the word descriptively for its trading cards.

As to Panini's evidence, its long use of LIMITED (since 1994) does not necessarily establish acquired distinctiveness. Here, this long use is outweighed by the other evidence showing that "limited" is highly descriptive, and by the absence of any direct evidence showing consumer recognition of the term as a source indicator for Panini's cards.

Moreover, Panini's sales figures were problematical, since they included sales in both the United States and Canada [hockey cards, I presume - ed.]. The sales figures were merely raw numbers without evidence of market share, and in any case may show merely the popularity of the product and not necessarily consumer recognition of the proposed mark as a source indicator. Panini's advertising expenditures were "hardly impressive." There was no evidence of advertising through television, radio, print media, or the Internet, and no direct consumer testimony, no consumer surveys, and no evidence of unsolicited media coverage.

The Board concluded that Panini had failed to prove acquired distinctiveness. Given the highly descriptive nature of the term, much more evidence, especially in the form of direct evidence from the relevant purchasing public, was required.

And so the Board sustained the opposition.

Read comments and post your comment here

TTABlog note: Oppositions and cancellations based on Section 2(e)(1) mere descriptiveness are not all that common. A memorable one was the ANNAPOLIS TOURS case from 2013 [TTABlogged here].

Text Copyright John L. Welch 2015.


At 2:48 PM, Anonymous joe dreitler said...

My experience is that they are not all that common for one simple reason. $$$.Most companies are not going to file an opposition against a descriptive term unless a registration will stop them from using a term DESCRIPTIVELY that they need for their own product. Not a lot of them. And once the lawyer tells the business person that the Applicant can continue to use it even if successful, not many businesses jump into the ring.


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