Leaf suing Panini over Prizm name

Posted Feb 12, 2013 by Bob D'Angelo

Updated Feb 12, 2013 at 10:58 AM

Legally, the ball is now in Panini America’s court. Leaf already has fired the first shot.

We’re not talking basketball here. Well, perhaps to some extent, we are.

On Friday, Leaf sued Panini, changing unfair competition and copyright infringement. The brief filed in U.S. District Court in Dallas (both companies are located in north Texas) alleges that Panini’s new Prizm products infringes upon Leaf’s Prismatic trademark.

Leaf contends that “the look and feel” of the Prizm cards are nearly identical of Leaf’s Prismatic cards “in terms of name and appearance.”

So far, Panini’s Prizm basketball and football cards have been well-received. In its complaint, Leaf claims it began using the Prismatic mark for its trading cards in 2011.  These cards have “a metal appearance and refract light,” are “bright and glossy, and have a reflective, 3-dimensional appearance.”

Leaf also claims its parallel cards incorporate different colors, like gold, red, blue, green and purple, and produced eight different exhibits to buttress its argument. Leaf also produced two lengthy exhibits from www.beckett.com, which showed 2,848 listings of “2011 Leaf Prismatic” cards and 1,556 listings for “2012 Leaf Prismatic” cards.

Panini released its Prizm products in late 2012, and Leaf is alleging that the packaging and reliance on the word “Prizm” is “confusingly similar” to Leaf’s Prismatic mark.

According to court documents, Leaf’s attorneys sent a letter in late January asking Panini to “cease its infringing activities.” Panini in turn denied there was any infringement and refused to stop promoting and producing the Prizm product.

Leaf then claimed that on Feb. 6, Panini expanded its infringement through a blog posting on the company’s website. Leaf, quoting the blog in an exhibit, points to Panini’s claim that its Select Basketball product was in production and would include “profoundly Prizmatic on-card autographs.” Panini later altered its blog, the court documents claim, by deleting that phrase and substituting it with “on-card Prizm technology.”

Collectors might find all of this kind of petty, but card companies do zealously guard product names; Leaf believes Panini has muddied the waters by issuing a product name that sounds similar, in their view.

For a clearer analysis of this issue, I turn to Paul Lesko, who writes the “Law of Cards” column at The Cardboard Connection (www.cardboardconnection.com). Lesko has a knack for cutting through all the legalese, and he offers this view:

Lesko believes the battle in this lawsuit will be about the strength of Leaf’s “Prismatic” mark. What will be argued is whether the mark is descriptive, suggestive or arbitrary. Here is Lesko’s explanation and analysis:

“Descriptive” means the mark simply describes the product, and Lesko says these types of marks are “generally weak.” “Suggestive” means the mark hints at qualities of the product, rather than describing it. “Arbitrary” means the mark has nothing to do with the product. Lesko notes that the latter two characterizations are stronger than the descriptive mark.

So, Lesko says, Leaf will argue that Prismatic is either suggestive or arbitrary. Panini will counter and claim that Prismatic is descriptive.

The key here is “secondary meaning”— that is, when consumers hear the term “Prismatic,” their first thought is that it is a Leaf product.

If Leaf wins its lawsuit. Then Panini will have to rebrand the Prizm product, and that gets rather expensive.

Here is a link to the court document: http://www.scribd.com/doc/125044131/Leaf-vs-Panini.

And here is the link to Lesko’s entire column:

http://www.cardboardconnection.com/news/leaf-sues-panini-over-prizm-brand. As I said, Paul knows his legal stuff and writes in a way that the layman can understand what’s going on. If what I’ve written seems hard to follow, go to Paul’s link and read his column — in fact, read it whether you believe my blog entry is clear or not. I certainly have borrowed heavily from his analysis.

It will be interesting to see how this all shakes out. But I am guessing it’s going to be a long road unless the card companies get together and hammer out an agreement out of court. They might call each other a bunch of names in the process, but then again, a name is what started all of this.