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 “[t]o a large extent, the sports trading card business caters to collectors and hobbyists [whose] interest in a specific card and the card’s value is often driven by the card’s scarcity.” Trading card companies frequently limit the quantity of cards released in the market to “preserve the collectability of its card.” In fact, the Applicant’s blog even indicated that some of its NFL trading cards were “sequentially numbered to 499 or less.” The Opposer, Tops, also submitted overwhelming evidence of third-party use of the word LIMITED on trading cards and deposed the owner of a sports memorabilia and trading card seller to provide additional input and context. The TTAB held that “in the context of the sports trading card industry, the word ‘limited’ immediately describes that certain cards are produced in a ‘limited’ quantity or in a ‘limited edition.’”
Second, having found the mark highly descriptive, the Board found that Panini had a higher burden of proof in proving that its LIMITED mark had acquired distinctiveness. In order to show that a mark has acquired distinctiveness, an applicant “must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”
Panini argued that it had acquired distinctiveness and provided evidence that it has been using the mark since 1994 and that it had over $30,000,000 in sales. The Board disagreed, holding that long-time use did not, by itself, show acquired distinctiveness and that until 1999, all of Panini’s LIMITED-related sales were made using the mark LEAF LIMITED, not LIMITED per se. In addition, the Board held that Panini’s sale records were problematic, in that they included sales made outside of the United States and did not provide any type of context showing the market share. The Board also held that Panini’s advertising figures, filed confidentially, were “hardly impressive.” In fact, the only advertisement of record was a set of promotional brochures with no evidence of how many were distributed. Furthermore, while Panini submitted pages from its blog showing visitor comments, it did not provide any evidence as to the number of visitors to the blog. All of this was fatal to Panini’s attempt to show acquired distinctiveness, with the “fundamental flaw” of Panini’s case being that it provided no consumer testimony, surveys, or evidence of unsolicited media coverage. As a comparison, in In re Country Music Assoc. Inc., the Applicant provided a survey that showed 85% of respondents believed term COUNTRY MUSIC ASSOCIATION was a brand name, not just a description of an association dedicated to country music.
Ultimately, the Board’s decision affirmed a basic tenet of trademark law—that any company should be allowed to use a word that is merely descriptive of its goods and services, unless one company has put extensive time and effort into making the public associate that word with that one company. Only then, can that company claim it as a trademark.
ONE. The more descriptive a trademark, the harder it is for an applicant to show acquired distinctiveness.
TWO. Using a trademark alone is not enough to show acquired distinctiveness. Consumer testimony, surveys, and unearned media is the best evidence to prove acquired distinctiveness.
THREE. If a trademark owner uses sales data as evidence of acquired distinctiveness, the trademark owner must provide context (i.e. market shares, comparisons to other companies) in order for it to hold any weight.