The USPTO’s Trademark Trial & Appeal Board held that, given the nature of the collectible goods that are often sold in limited batches, the mark LIMITED for sports trading cards was merely descriptive and not entitled to registration.
TTAB Case Background
Both parties in this case, Panini American Inc. and the Topps Company, Inc., manufacture and sell sports trading cards. Last year, Panini filed a trademark application for LIMITED for trading cards and received a descriptiveness refusal.
The USPTO will not register trademarks that are merely descriptive of a mark’s goods and services, unless that mark has gained secondary meaning, or acquired distinctiveness, in the minds of consumers. A term is considered to be merely descriptive under Section 2(e)(1) if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.
In response to the refusal, Panini alleged that, through years of use in the marketplace, Panini had acquired distinctiveness in the otherwise descriptive LIMITED mark.
The USPTO published the LIMITED trademark application for opposition and Topps filed a notice of opposition, claiming that the LIMITED mark was descriptive and that Panini had not acquired distinctiveness in the word LIMITED for trading cards.
The TTAB’s reasoning for why the word ‘Limited’ is a merely descriptive trademark
When analyzing whether a trademark owner owns rights in an otherwise descriptive mark, the TTAB looks at two elements: (1) the level of descriptiveness of the mark and (2) whether the Applicant has acquired distinctiveness in the mark.
For the first element, the Board held that the LIMITED was highly descriptive for sports trading cards. The Board held that “