BALTIMORE — A Maryland nonprofit that sponsors student-athletes has asked the U.S. Supreme Court to review its yearslong trademark fight with Uninterrupted, a multimedia company cofounded by basketball icon LeBron James.
Located in Prince George’s County, Game Plan Inc. applied to register the tagline “I AM MORE THAN AN ATHLETE” for its charity fundraising in 2016. The phrase was printed on T-shirts sold to help introduce young people in underserved communities to different educational and career paths.
So far, they have failed to prevent Uninterrupted from using a different style of the trademark, even though James’ company acquired its common law rights after the mark had been federally registered to Game Plan, and after Game Plan had filed an opposition.
In the trademark process, “common law” rights are meant to protect a business’s branding in a local market, often when they are applying for federal approval. Generally, “common law” allows a business to use a mark in a city or state, even if it is being used at the local level somewhere else. If federal registration is approved, the applicant has the right to use the mark anywhere in the country.
When Uninterrupted, a platform for athletes to express themselves off the court or off the field, signaled their intent to place the mark on its own clothing in 2018, Game Plan objected, claiming the dual usage would be confusing.
The federal Trademark Trial and Appeal Board disagreed and dismissed the objection, citing a lack of evidence and Uninterrupted’s commercial, non-charitable purpose.
Last year, the U.S. Court of Appeals for the Federal Circuit upheld the board’s ruling, and on April 24, Game Plan filed a 128-page petition asking the country’s highest justices to consider the matter.
In a statement Thursday, Game Plan described their case as one addressing “critical questions regarding the hierarchy of trademark rights in the United States.”
“By allowing these late-acquired rights to supersede a federal registration, the current ruling creates significant ambiguity for all trademark owners and undermines the stability of the federal registration system,” they said.
Representatives for James and Unlimited did not immediately respond to comment requests Thursday.
