The Federal Circuit’s recent decision in Game Plan, Inc. v. Uninterrupted IP, LLC underscores pivotal considerations in trademark law, particularly the intersection of assignment, priority, and procedural adherence. At issue was a dispute over the validity of a trademark assignment and its implications for brand ownership.
Game Plan, a nonprofit entity supporting student-athletes, opposed Uninterrupted’s intent-to-use applications for variations of the marks I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE. Uninterrupted, a media company co-founded by LeBron James, sought to register these marks for entertainment services and clothing. The Trademark Trial and Appeal Board (TTAB) dismissed Game Plan’s opposition and granted Uninterrupted’s counterclaim to cancel Game Plan’s existing registration.
The TTAB’s ruling centered on a 2019 asset purchase agreement through which Uninterrupted acquired the MORE THAN AN ATHLETE mark from a third party. Game Plan argued the assignment was invalid under Section 10 of the Lanham Act, claiming it was an “assignment in gross” and improperly modified Uninterrupted’s applications after opposition.
The Federal Circuit rejected these claims. It held that the assignment was not “in gross” because it transferred the mark alongside its associated goodwill. The TTAB had previously noted that the mark was used in commerce through modest sales of apparel and wristbands, establishing a bona fide business and source identification. Uninterrupted’s retention of the prior owner as a consultant further supported the continuity of goodwill.
The court also clarified that Section 1060(a)(1)’s restrictions did not apply, as Uninterrupted acquired pre-existing common law rights, not merely intent-to-use applications. Game Plan’s argument that the assignment amounted to a substantive amendment was dismissed, as the TTAB’s priority determination rested on Uninterrupted’s ownership of established rights, not the applications themselves.
A critical procedural point emerged: Game Plan failed to introduce evidence during the trial phase, relying instead on documents attached to a summary judgment motion. The Federal Circuit ruled the TTAB acted properly in excluding this evidence, underscoring the importance of adhering to procedural norms in trademark litigation.
Key Takeaways
- Assignment Validity: A trademark assignment is lawful if it transfers goodwill and establishes commercial use, even if the mark was initially used in limited capacity.
- Common Law Rights: Pre-existing common law rights can predate formal registrations, influencing priority claims in disputes.
- Procedural Precision: Failing to introduce evidence during the trial phase can result in its exclusion, even if it later appears relevant.
For businesses, this case highlights the necessity of carefully evaluating trademark assignments and litigation strategies. Understanding the nuances of priority, goodwill, and procedural compliance is essential to protecting brand equity and avoiding costly disputes. Trademark monitoring remains critical, particularly in cases where third parties may seek to assert overlapping rights.
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The case of Game Plan v. Uninterrupted IP serves as a cautionary example of the risks of neglecting trademark vigilance. With IP Defender, businesses can stay ahead of infringers and safeguard their brands in an evolving marketplace.