A federal trademark registration offers nationwide priority, yet that protection is not absolute. A decision by the U.S. Court of Appeals for the Federal Circuit - now final after the Supreme Court declined to review it - illustrates this fragility. In Game Plan, Inc. v. Uninterrupted IP, LLC, the court confirmed that common law rights established after a federal application is filed can still defeat a registered mark.
For executives and legal teams, this ruling highlights a critical vulnerability in trademark strategy: a registration does not guarantee immunity if another party has already established priority through actual use of the mark. This underscores the critical role of trademark monitoring in protecting brand identity as a defensive mechanism against such erosions of rights.
The Dispute Over "More Than an Athlete"
The case involved the phrase "MORE THAN AN ATHLETE." Game Plan, Inc., a charity, sought to register a stylized version of the phrase for charitable fundraising services via t-shirt sales. The company filed its application in December 2016 and received federal registration in June 2018.
Months later, in March 2018, Uninterrupted IP, LLC (UNIP), a media entity linked to NBA star LeBron James, filed six intent-to-use applications for similar marks. When Game Plan attempted to oppose these applications, UNIP responded by canceling Game Plan’s registration.
The pivotal moment occurred in February 2019, when UNIP signed an asset purchase agreement. Through this deal, UNIP acquired common law rights to the mark from a third party who had been selling merchandise with "MORE THAN AN ATHLETE" since at least May 2013. Because this original user began using the mark before Game Plan filed its application, UNIP successfully claimed priority.
Common Law Priority Trumps Registration Status
Game Plan argued that its federal registration should protect it under Section 1115(b) of the Lanham Act, which treats an incontestable registration as conclusive evidence of exclusive rights. The company contended that allowing post-filing common law rights to override a federal mark undermined the statutory priority granted by filing date.
The Federal Circuit rejected this argument. The court determined that UNIP’s acquisition of preexisting common law rights was neither a prohibited amendment to its pending applications nor an invalid transfer of goodwill. Instead, it constituted a legitimate acquisition of rights that predated Game Plan’s application. Because the third party had used the mark in commerce before Game Plan filed, those common law rights were superior to Game Plan’s federal registration.
This distinction is vital for businesses relying on intent-to-use applications or assuming their registration freezes the competitive landscape in their favor. Prior use by another party creates a cloud over title that a registration alone cannot erase. This legal complexity mirrors the complexity of trademark law regarding confusability and monitoring, where understanding the nuances of priority is essential.
Strategic Implications for Brand Protection
The ruling has significant implications for how companies approach trademark monitoring and conflict resolution.
1. Monitoring Must Be Proactive, Not Reactive
Waiting until an application is published to check for conflicts is often too late. If another party has already established common law rights through sales or public use, your own registration or application may be vulnerable to cancellation or opposition. Continuous monitoring of federal dockets, general commerce, and marketplace activity is essential.
2. Due Diligence Extends Beyond the USPTO Database
When conducting clearance searches, assume that a clean result in the federal database does not guarantee freedom to operate. Common law rights exist independently of registration. Businesses must investigate actual market use to ensure they are not infringing on established goodwill elsewhere. This due diligence extends to tracking potential threats like those facing the THE BECOMING CODE trademark, where active surveillance is key.
3. The Value of Early Use
For startups and emerging brands, establishing concrete evidence of use as early as possible is more valuable than simply filing paperwork. While federal registration provides significant benefits, it does not automatically grant superior rights over a prior user. Documentation of sales, advertising, and distribution dates becomes critical evidence in any potential dispute.
Conclusion
The Game Plan decision reinforces a fundamental principle of U.S. trademark law: priority is generally determined by who first uses the mark in commerce, not necessarily who first files an application. For businesses, this means that trademark strategy cannot be viewed as a purely administrative task of filing forms. It requires active engagement with the market to identify and resolve conflicts before they escalate into costly litigation.
Protecting a brand involves more than securing a certificate from the USPTO. It demands a rigorous understanding of how common law rights interact with federal registrations and a disciplined approach to monitoring potential threats in the marketplace. Ignoring the nuances of priority can leave even registered trademarks exposed to cancellation.