The Federal Circuit’s decision in Game Plan, Inc. v. Uninterrupted IP, LLC offers clarity on the interplay between federal trademark registration and common law rights. The case examines whether a party can assert priority over a registered mark by demonstrating earlier, valid common law use. The ruling affirms that federal registration does not automatically insulate a mark from challenges based on preexisting common law claims.
Dispute Over Trademark Claims
Game Plan, Inc., a nonprofit dedicated to supporting student athletes, secured federal registration for the mark “I AM MORE THAN AN ATHLETE. GP GAME PLAN” in 2018 for charitable fundraising services. Uninterrupted IP, LLC (UNIP), a media entity for athletes, filed intent-to-use applications for similar marks in 2018. Game Plan opposed UNIP’s applications, asserting its earlier registration granted it priority.
UNIP contested Game Plan’s registration, claiming its own rights to the mark “MORE THAN AN ATHLETE.” UNIP’s rights were established in 2019 through the purchase of the mark from More Than an Athlete, Inc., which had used the mark since 2012 for clothing and community events. The Trademark Trial and Appeal Board (TTAB) ruled in favor of UNIP, determining its common law rights predated Game Plan’s registration.
Legal Questions on Assignments and Opposition Procedures
Game Plan appealed, arguing that UNIP’s acquisition of common law rights violated trademark antitrafficking rules and procedural constraints during opposition proceedings. The company contended:
- The transfer constituted an “assignment in gross,” which is typically prohibited under trademark law.
- The transfer of an intent-to-use application breached 37 C.F.R. § 2.133(a), which limits amendments during oppositions.
The Federal Circuit rejected these claims, noting that the assignment did not contravene the antitrafficking rule. The court emphasized that the transfer explicitly included the mark and “all of the goodwill of the business related to” the mark, fulfilling the criteria for a valid assignment.
Court’s Rationale: Common Law Rights Precede Registration
The court clarified that the antitrafficking rule (15 U.S.C. § 1060(a)(1)) applies only to assignments of intent-to-use applications before use begins. Since UNIP’s common law rights were established by 2012, the assignment fell outside this provision.
Additionally, the court held that 37 C.F.R. § 2.133(a) governs amendments to pending applications, not the independent acquisition of common law rights. Because the TTAB’s decision relied on UNIP’s independently acquired rights, which predated Game Plan’s registration, the assignment did not violate procedural rules.
Implications for Businesses: Navigating Trademark Conflicts
This case underscores two key principles for businesses:
Common Law Rights Can Precede Federal Registration: A federally registered mark is not immune to challenges based on earlier, valid common law use. Companies must proactively monitor potential conflicts and assess the strength of their trademark claims.
Assignments During Oppositions Are Permissible: Transferring common law rights during an opposition is allowed if it includes goodwill and maintains continuity of use. However, businesses must structure assignments to avoid procedural missteps.
Trademark confusability remains a central concern, particularly when marks are similar in sound, appearance, or meaning. Enterprises should conduct rigorous due diligence and implement proactive trademark monitoring to mitigate risks.
By tracking registrations across 50+ jurisdictions, including the EU, USA, and Australia, IP Defender helps businesses identify and address potential conflicts. This approach ensures brands are protected from rogue or confusable marks, reinforcing the importance of vigilance in trademark strategy.