What Does a Hologram Trademark Signify When the Hologram Isn't There?

Summary

Pixels is a print-on-demand vendor. Pixels’ users have uploaded various images associated with Michael Jordan sports trading cards. Here’s an example: If this were a framed original of the trading card, the First Sale doctrine should apply. If it were a counterfeit version of the trading card, it would be an obvious legal violation. But this appears to be a photo of the trading card that’s printed. No reasonable buyer would believe this is the original trading card. Upper Deck nevertheless seeks to enforce its IP rights in the print, both in the Michael Jordan imagery (it received via a license) and its hologram mark (the black shape in the upper left of the print–see the outline from the trademark registration). I believe the original card has actual holographic imagery in the mark’s location to reinforce the original’s authenticity. (Holograms are harder and more expensive to mimic, so they are routinely used as an anti-counterfeiting or security device). So when the reproduction lacks the holographic component of the mark, what does that signify? To me, it’s a strong signal to consumers that the copy isn’t being presented as authentic. Does that demonstrated lack of authenticity have any relevance to the trademark considerations? Unfortunately, the court doesn’t address that issue. 🙁 Trademark Dilution The court says the hologram trademark isn’t sufficiently famous to qualify for dilution protection. Trademark Infringement Mark strength. Even though the hologram mark isn’t famous, it’s a strong mark. Proximity of goods. Both offer sports memorabilia. Mark similarity. Identical. Actual confusion. The court presumes actual confusion from the mark’s identicality, with a bonus gratuitous shoutout to initial interest confusion because why not? Marketing channels. Both sell on the Internet. Purchaser care. An authentic Michael Jordan trading card depicted in the image above would sell for upwards of $1M. Pixels sells the reprint for $70. Purchasers will note the differ...