IP Law Daily, TRADEMARK—TTAB: Proposed mark THE ROOKIES was generic when used with collectible sports cards, (Oct 24, 2022)

By Kevin M. Finson, J.D.

The proposed mark THE ROOKIES was generic when used with collectible cards because the public would see it as describing a certain category of cards and not as an indicator of the cards’ source.

A seller of collectible sports cards could not show that its proposed mark was not generic, the Trademark Trial and Appeal Board has held. The proposed mark THE ROOKIES would be interpreted by the relevant public as a sub-genus of collectible cards, not as a source indicator (In re Panini America, Inc., October 20, 2022, Lynch, C.).

Panini America, Inc. (Panini) sought registration on the Supplemental Register of the standard character mark THE ROOKIES, with ROOKIES disclaimed, for use with “Collectible trading cards; Sports trading cards” in International Class 16. The Examining Attorney refused registration of the mark as generic. Panini appealed.

Genericness. The parties agreed that the identification of goods in the application appropriately described the genus of goods at issue. The Examining Attorney argued that the relevant public was ordinary consumers, while Panini argued that because its cards sold for hundreds of dollars its consumers were more sophisticated. Reviewing sales listings, the Board held that the Panini’s cards were sold both at high and low-price points to children and serious collectors, so the relevant public was not limited to sophisticated collectors. The Examining Attorney argued that the relevant public would commonly encounter the term “rookies” used to describe a sub-genus of collectible playing cards, specifically cards from a given player’s first year of high-level play. Panini argued that while ROOKIES was highly descriptive, the presence of the additional word “THE” acted to single out and distinguish Panini’s cards from competitors. Reviewing evidence of third party uses and registrations, as well as dictionary definitions of the word THE which did not support the meaning Panini attributed to it, the Board held that the relevant public would see THE ROOKIES as referring to a particular sub-genus of collectible sports cards. Therefore, the term was generic.

The Board affirmed the refusal to register.

The Case is Serial No. 90013399.

Attorneys: Norman H. Zivin, Kira McCarthy and Tonia A. Sayour (Wolf, Greenfield & Sacks, PC) for Panini America, Inc. Andrea Hack for the USPTO.

Companies: Panini America, Inc.

Cases: Trademark USPTO GCNNews