Game Plan Interrupted: A Lesson in Assignment of Trademark Rights
The United States Court of Appeals for the Federal Circuit recently affirmed a final decision of the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB) cancelling Game Plan, Inc.’s registration for its stylized mark I AM MORE THAN AN ATHLETE. GP GAME PLAN and dismissing Game Plan’s opposition to Uninterrupted IP, LLC’s six intent-to-use applications for marks containing “I AM MORE THAN AN ATHLETE” and “MORE THAN AN ATHLETE.”[1]
Game Plan is a non-profit organization with a goal of assisting students in underserved communities. On December 28, 2016, Game Plan applied to register the stylized I AM MORE THAN AN ATHLETE trademark with the USPTO, and the trademark was registered on June 5, 2018. Meanwhile, Uninterrupted IP, LLC (“UNIP”), a company that seeks to provide a means of self-expression for athletes through media and apparel, filed six intent-to-use applications for stylized marks incorporating the phrases I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE in fonts differing from the font used in Game Plan’s registered mark.
On November 28, 2018, Game Plan initiated an opposition proceeding in the TTAB under Section 2(d) of the Lanham Act, asserting that UNIP’s proposed marks were likely to cause confusion with its own registered mark. Section 2(d) of the Lanham Act prohibits registration of trademarks that are likely to cause confusion among consumers with pre-exiting marks “when used on or in connection with the goods of the applicant.” Game Plan further asserted that they were entitled to a finding of priority of use based on their federal registration for their mark. Additionally, Game Plan asserted that, because rights to the mark MORE THAN AN ATHLETE were assigned to UNIP during the litigation, the assignment of the mark was invalid.
UNIP responded that their marks were not likely to cause confusion. More importantly, UNIP counterclaimed to cancel the registration of Game Plan’s mark, asserting priority of use based on common law rights. UNIP argued that it had acquired the rights to the mark MORE THAN AN ATHLETE through a February 22, 2019, asset purchase agreement with DeAndra Alex and her company, More Than an Athlete, Inc. (“MTAA”). Crucially, MTAA had used that mark on clothing and at community events since at least 2012.
In its final decision, the TTAB found that Game Plan failed to submit any evidence of prior use at trial, that is, evidence of use prior to MTAA’s use, of which UNIP obtained the benefit through its asset purchase agreement. Thus, Game Plan had neither common law rights through earlier use nor statutory rights due its registration. The TTAB relied on Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc.[2] as precedent for the proposition that the motivation for a sale of a mark and its associated goodwill does not invalidate the rights achieved by assignment even when the assignment is made during litigation. Finally, the TTAB decided in favor of UNIP on its counterclaim, finding that UNIP had superior rights to MORE THAN AN ATHLETE notwithstanding Game Plan’s application filing on December 28, 2016. Game Plan’s trademark registration was accordingly cancelled.
Game Plan timely appealed to the Federal Circuit, arguing that MTAA’s 2019 assignment to UNIP was invalid and an “assignment in gross,” meaning it had violated trademark antitrafficking rules under 15 U.S.C. § 1060 (a)(1) and that the TTAB had failed to review evidence presented on this issue in particular. An assignment in gross is an unlawful sale of a trade name or mark that is separate from the goodwill associated with that name or mark.
Like the TTAB, the Federal Circuit also rejected Game Plan’s arguments, pointing out that the 2019 assignment to UNIP included both the mark and its associated goodwill, which is the hallmark of a valid trademark assignment. In view of that assignment, the Federal Circuit affirmed the TTAB’s decision to sustain UNIP’s priority claim based on its common law rights obtained from MTAA. The timing of the assignment was deemed irrelevant.
Simply put, UNIP was able to use a clever tactic to assert common law rights in their mark to predate Game Plan’s registration filing date. This decision confirms that a trademark owner may become the senior user in a TTAB opposition proceeding by acquiring superior rights from a third party prior user by assignment of the third party’s mark and its associated goodwill, regardless of the timing of the assignment.
