The U.S. Court of Appeals for the Federal Circuit (CAFC) recently affirmed a decision by the Trademark Trial and Appeal Board (TTAB) that recognized Uninterrupted IP, LLC’s (UNIP) priority claim over Game Plan, Inc.’s trademark registration for “I AM MORE THAN AN ATHLETE.” The ruling highlights the intricate balance between common law rights and registered trademarks, emphasizing the need for businesses to maintain thorough documentation of their brand usage.
Game Plan, a nonprofit organization supporting underserved student-athletes, registered the mark in 2018 for charitable fundraising services. UNIP, a platform for athletes to share personal narratives, sought to register similar marks in the same year, asserting common law rights derived from an asset purchase agreement with DeAndra Alex and her company, More Than an Athlete, Inc. The dispute hinged on whether UNIP’s preexisting rights, established prior to Game Plan’s registration, granted it a legal advantage in the marketplace.
The TTAB initially rejected Game Plan’s opposition, noting that common law rights alone cannot substantiate a trademark claim without documented evidence of use or admission of prior activity. This principle underscores the necessity for businesses to not only secure trademark registrations but also to preserve records of their brand’s usage to defend against potential challenges.
The CAFC upheld the TTAB’s decision, dismissing Game Plan’s argument that the 2019 transfer of assets from Alex’s company to UNIP constituted an invalid “assignment in gross.” The court clarified that the transfer involved tangible assets, including goodwill associated with the mark, and was not a broad sale of the business. This ruling reinforces that common law rights can be transferred if they are explicitly tied to specific marks and properly documented.
Game Plan also contended that the 2019 transfer, occurring after its opposition was filed, violated procedural guidelines. However, the CAFC noted that the TTAB’s priority determination was based on UNIP’s ownership of preexisting rights, not its intent-to-use applications. This distinction is critical: common law rights, if established and documented, can supersede registered trademarks even if the latter were filed first.
The case illustrates the risks of neglecting trademark monitoring. Businesses must actively evaluate potential conflicts and ensure their rights are legally protected. While registration provides legal standing, common law rights - often overlooked - can be equally potent if maintained through consistent use and documentation.
For companies navigating trademark law, the lesson is clear: a robust strategy requires both registration and evidence of use. Confusability between marks remains a central issue, with the burden of proof resting on the party asserting priority. In an increasingly competitive market, understanding these nuances is essential to avoid costly legal disputes.
The decision also underscores the importance of clear contractual agreements when transferring intellectual property. Businesses must ensure that assignments of trademarks or related assets are documented with specificity to prevent disputes over ownership and priority.
Ultimately, the case serves as a reminder that trademark law is as much about documentation and strategy as it is about legal precedent. For businesses, the path to protecting their brand involves not only securing registrations but also demonstrating a consistent history of use and rights. In a dynamic marketplace, these steps can determine the outcome between legal success and significant financial risk.
IP Defender is here because trademark ownership requires owners to protect their intellectual property from infringement and conflicts and be able to proof owners took care of their trademarks in case of disputes. Services like IP Defender can help businesses protect their trademarks by monitoring national trademark databases for conflicts and infringements. IP Defender monitors 50+ countries, including the whole EU, USA, Australia, and many more, ensuring brands stay ahead of potential threats.