TTAB Dismisses Opposition: Applicant Proved Priority Through Assignment of Common Law Mark After Proceeding Commenced

Game Plan, Inc. opposed six applications to register the marks I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE for clothing and entertainment services, claiming likely confusion with its registered mark I AM MORE THAN AN ATHELETE & Design (shown below) for "Charitable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs" and with its common law mark MORE THAN AN ATHLETE for t-shirts. Applicant UNIP (apparently owned in part by LeBron James) counterclaimed for cancellation of that registration on the ground of likelihood of confusion. The sole issue for the Board was priority, and UNIP came in first. Game Plan, Inc. v. Uninterrupted IP, LLC, Opposition No. 91244990 (December 14, 2023) [not precedential] (Opinion by Judge Mark A. Thurmon).

Opposer Game Plan did not submit any evidence at trial, instead referring to "previously discovered evidence as referenced in filings already submitted to the Board," including the entire TTABVUE record. The Board pointed out that evidence submitted with prior motions must be properly introduced during a party's testimony period. 

UNIP had filed a motion for summary judgment based on Game Plan's lack of evidence but, by reason of UDIP's counterclaim, the file of Game Plan's registration was made part of the record under Rule 2.122(b)(1). "While this fact saved Game Plan's Opposition from dismissal for failure to prosecute under Trademark Rule 2.132, it leaves Game Plan with no other evidence to support [its] claims."

Without evidence, Game Plan's claim of common law rights was baseless and so the Board considered only its registered service mark rights. Game Plan could rely only on the filing date of its underlying application (December 28, 2016) as its constructive first use date.

UNIP claimed to have acquired by assignment, common law rights based on use of I AM MORE THAN AN ATHLETE dating back to 2013. Game Plan did not challenge the establishment of common law rights by UNIP's assignor, nor that UNIP continues to use the mark, but it disputed the validity of the assignment.

Game Plan contended that UNIP's assignor abandoned the mark prior to the 2019 assignment, but that claim failed due to the lack of supporting evidence. In any case, UNIP's evidence showed that the assignor continued to use the mark prior to the assignment.

Game Plan claimed that there was assignment in gross because the assignment was executed after this proceeding commenced, and "UNIP made the purchase after the start of this action [i.e., proceeding - ed.] in order to litigate from a changed position." The Board was unmoved.

[T]he motivation for a sale is irrelevant and senior user status may be properly achieved by assignment in anticipation or in the midst of litigation.” Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339, 33 USPQ2d 1961, 1967 n.10 (E.D.N.Y. 1994) (citing Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 678 (7th Cir. 1982)). The question of whether the assignment is valid does not turn on the reasons the parties agreed to the deal.

The Board noted that UNIP uses the mark MORE THAN AN ATHLETE, "which is effectively the same use as Ms. Alex, the assignor] made prior to the assignment, telling the same story about athletes. "We find the similarity of the businesses facilitated transfer of the goodwill Ms. Alex had developed in connection with the sale of t-shirts. UNIP even retained Ms. Alex as a consultant, another fact that supports the transfer of the goodwill. All the evidence of record supports the validity of the assignment."

The trademark assignment "means that UNIP stand in the shoes of [the assignor] and UNIP, therefore, has established priority for purposes of its counterclaim."

Since Game Plan conceded likelihood of confusion, and UNIP established priority, the Board granted the counterclaim and ordered cancellation of Game Plan's registration. For the same reason, the Board dismissed the opposition.

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Text Copyright John L. Welch 2023.