The Federal Circuit has affirmed the Trademark Trial and Appeal Board’s (TTAB’s) cancellation of the registration for the mark I AM MORE THAN AN ATHLETE. GP GAME PLAN.
Game Plan, Inc. is a non-profit organization that aims to assist student-athletes in underserved communities. In 2016, Game Plan applied to register the mark with the US Patent and Trademark Office (USPTO).
The USPTO registered the mark in 2018.
The mark covers “[c]haritable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs.”
Uninterrupted IP, LLC (UNIP) is a media company that provides a platform for athletes to express their identities beyond sports through storytelling, digital content, and apparel. In March 2018, UNIP filed six intent-to-use applications for marks incorporating the phrases I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE in standard and stylized fonts.
UNIP’s proposed marks cover clothing and entertainment services such as “a website featuring non-downloadable videos, podcasts, films and social media posts in the field of sports.”
Game Plan initiated an opposition proceeding with the USPTO Trademark Trial and Appeal Board (TTAB or Board) to oppose registration of UNIP’s proposed marks.
Game Plan asserted that there was a likelihood of confusion, under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), between UNIP’s proposed marks and its registered mark and that it had priority over UNIP’s proposed marks.
UNIP asserted that if there was a likelihood of confusion, it had priority over Game Plan’s mark based on its common law rights in the mark MORE THAN AN ATHLETE.
UNIP acquired common law rights to the mark MORE THAN AN ATHLETE through a 2019 asset purchase agreement signed after Game Plan filed its Notice of Opposition.
The 2019 Assignment transferred to UNIP both the mark MORE THAN AN ATHLETE and “all of the goodwill of the business related to” the mark.
UNIP purchased the common law rights from DeAndra Alex and her company, More Than an Athlete, Inc. (“MTAA”), which had used the mark MORE THAN AN ATHLETE since at least 2012 in connection with clothing and community events.
On appeal, Game Plan argued that the Board erred in determining that UNIP had priority over Game Plan’s mark because the 2019 Assignment violated 15 U.S.C. § 1060(a)(1) and 37 C.F.R. § 2.133(a).
Game Plan asserted that the 2019 Assignment violated the trademark antitrafficking rule under 15 U.S.C. § 1060(a)(1) for two reasons:
Game Plan contended that the 2019 Assignment was an assignment in gross. An assignment in gross is a sale of a trade name or mark divorced from its goodwill.
Section 1060(a)(1) states “[a] registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used.”
The Federal Circuit had previously noted that “a trademark cannot be validly assigned unless accompanied by its goodwill garnered in the marketplace.”
The Federal Circuit found that the TTAB’s conclusion that the 2019 Assignment was not an assignment in gross and satisfied the requirement to transfer goodwill was supported by substantial evidence and not contrary to the law.
The court noted that 2019 Assignment expressly defined the purchased assets as trademarks, among other intellectual property, “together with the goodwill of the business associated therewith.”
Said the court:
The Board also determined that the 2019 Assignment was not in gross because UNIP’s use of the mark was substantially similar to Ms. Alex’s use, and UNIP and MTAA shared a common purpose and audience.
The court thus affirmed the Board’s decision canceling Game Plan’s registration for the mark I AM MORE THAN AN ATHLETE. GP GAME PLAN and dismissed its opposition to UNIP’s intent-to-use applications.
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