Trademark Dispute Highlights Importance of Common Law Rights and Proper Evidence Submission
The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s decision to cancel Game Plan’s trademark registration for the mark I AM MORE THAN AN ATHLETE GP GAME PLAN. The case, Game Plan, Inc. v. Uninterrupted IP, LLC, underscores the complexities of trademark law, particularly in determining priority through common law rights and the necessity of procedural compliance in trademark disputes.
Game Plan secured a federal registration in 2018 for the stylized mark, used in charitable fundraising via t-shirt sales. Uninterrupted IP (UNIP) filed six intent-to-use applications for similar marks, including MORE THAN AN ATHLETE, for clothing and entertainment services. Game Plan opposed the applications, claiming likelihood of confusion and priority under Section 2(d) of the Lanham Act. UNIP countered, asserting its own common law rights through a 2019 assignment from More Than an Athlete (MTAA), which had used the mark since 2012.
The Board dismissed Game Plan’s opposition, citing insufficient evidence during the trial period. It concluded UNIP held valid common law rights through the 2019 assignment, which predated Game Plan’s filing. Game Plan appealed, arguing the assignment violated federal statutes by being an “assignment in gross.” The Federal Circuit rejected this, finding the transfer included goodwill and continuity of use, satisfying legal standards for common law rights.
The court also clarified that Section 1060(a)(1) and 37 C.F.R. § 2.133(a) did not apply, as UNIP received existing rights, not pending applications. The Board’s decision to exclude Game Plan’s evidence was upheld, as the company failed to follow procedural rules for submitting materials during the trial.
The case highlights critical lessons for businesses: trademark monitoring, documentation of common law use, and strict adherence to procedural requirements. Confusability and priority remain central to trademark disputes, and this ruling reinforces how common law rights can shape outcomes even in federal registration battles. For brands, proactive management of intellectual property and evidence preservation are essential to navigating the intricate landscape of trademark law.
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IP Defender’s approach emphasizes the importance of vigilance in trademark protection. With the right tools, brands can avoid costly legal battles and maintain control over their intellectual property. The case serves as a reminder that proactive measures, such as regular monitoring and proper documentation, are vital to safeguarding a brand’s legacy.