Panini America has settled with a Pennsylvania man it sued late last year for trademark infringement.
In a decision reached in U.S. District Court for the Eastern District of Pennsylvania on Tuesday, Panini America agreed to drop its lawsuit “with prejudice” against Rocco Tenaglia, of Reading, Pennsylvania. The Dallas-based company sued Tenaglia on Christmas Eve in the same federal court, accusing Tenaglia of federal trademark infringement, unfair competition under the Lanham Act, unfair competition and deceptive trade practices, unjust enrichment, common law unfair competition and injury to Panini’s business reputation.
The Lanham Act, passed by Congress on July 5, 1946, is a federal law that governs trademarks, service marks and unfair competition. It went into effect July 5, 1947.
Panini’s lawsuit concerned Tenaglia’s use of Panini’s “Rated Rookie” trademark, according to court documents. It alleged Tenaglia was advertising and selling sports cards featuring the “Rated Rookie” designation and similar variations, “all without the authority, consent or approval” of Panini.
The lawsuit, and three that Panini filed before its litigation against Tenaglia, focused on custom made cards featuring New Orleans Pelicans rookie Zion Williamson. The litigation against Tenaglia focuses on the defendant’s alleged use of Panini’s “Rated Rookie” trademark, according to court documents.
According to the agreement reached Tuesday, the court acknowledged that Panini is the owner of the trademarked phrase, “Rated Rookie,” which it has used on its cards. The trademark was registered Dec. 4, 2012, according to court documents.
The court ordered that Tenaglia, “and any entity or individual over which (he) has control,” shall immediately “cease and desist” from using the mark “Rated Rookie” and any versions that might be confused with the Panini trademarked logo. That includes and future marketing, advertising or selling by Tenaglia, the court ruled.
The decision also orders Tenaglia to desist making any representations to collectors or businesses that would lead them to believe the products he is offering would be “affiliated with, endorsed by, approved or recommended” by Panini.
In the original lawsuit, Panini claimed it sent a written notice to Tenaglia to stop using the alleged infringing marks to sell the cards on sites such as eBay (where Tenaglia’s handle is “roccoten,” according to court documents). However, Panini alleges that Tenaglia continued to market and sell the cards “through one or more eBay accounts.”
The original lawsuit contained exhibits that allegedly showed how Tenaglia infringed on Panini’s “Rated Rookie” trademark.
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