On April 20, 2015 Scott Slavick's article, "Stretched to its limit, Panini strikes out at TTAB," was published on InsideCounsel.
Why Topps Came Out on Top: Slavick Gives Inside Pitch
If you ever traded baseball cards, a recent decision by the TTAB could hit close to home, says Brinks’ Scott Slavick in his latest piece on InsideCounsel.com. In The Topps Co., Inc. v. Panini Amer., Inc., the TTAB sustained an opposition filed by Topps against sports trading card manufacturer Panini’s application to register the word limited for use in connection with its own cards.
Panini’s mark was published because the Examiner had accepted the company’s declaration that it had used the mark substantially exclusively and continuously for the past five years and had sold $30+ million of cards under the mark. But Panini’s argument for the term’s acquired distinctiveness did not prevail at the TTAB which recognized Topps’ claim that the terms limitedor limited edition are essential to preserving its business, and are descriptive because the exclusivity of such cards is at the core of the industry.