Game Plan, Inc. v. Uninterrupted IP, LLC

Game Plan, Inc. v. Uninterrupted IP, LLC

160 F.4th 1377 (2025)

United States Court of Appeals, Federal Circuit, No. 2024-1407

Relevant Facts

• Game Plan, Inc. is a non-profit organization that assists student-athletes in underserved communities and applied to register the stylized trademark 'I AM MORE THAN AN ATHLETE. GP GAME PLAN' on December 28, 2016

• The PTO registered Game Plan's mark on June 5, 2018, covering charitable fundraising services by means of selling t-shirts

• Uninterrupted IP, LLC (UNIP) is a media company that filed six intent-to-use applications in March 2018 for marks incorporating '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 websites featuring non-downloadable videos, podcasts, films and social media posts in the field of sports

• Game Plan initiated an opposition proceeding on November 28, 2018, asserting likelihood of confusion and priority over UNIP's proposed marks

• UNIP counterclaimed to cancel Game Plan's registration, asserting it had priority based on common law rights in 'MORE THAN AN ATHLETE'

• UNIP acquired common law rights through an asset purchase agreement (the '2019 Assignment') executed on February 22, 2019, after Game Plan filed its Notice of Opposition

• The 2019 Assignment transferred the mark 'MORE THAN AN ATHLETE' and all associated goodwill from DeAndra Alex and her company More Than an Athlete, Inc. (MTAA), which had used the mark since at least 2012 in connection with clothing and community events

• The Trademark Trial and Appeal Board (TTAB) dismissed Game Plan's opposition due to lack of evidence at trial and found that UNIP had priority based on common law rights

Legal Issues

• Whether the 2019 Assignment constitutes an assignment in gross and violates the trademark anti-trafficking rule under 15 U.S.C. § 1060(a)(1)

• Whether the timing of the 2019 Assignment violates 37 C.F.R. § 2.133(a) governing amendments to trademark applications during opposition proceedings

• Whether the Board abused its discretion by declining to consider evidence that Game Plan had not properly entered into the trial record

• Whether UNIP properly acquired enforceable common law rights in the mark despite not intending to offer certain services associated with the goodwill

Positions of the Parties

• Game Plan argued that the 2019 Assignment was improper as an assignment in gross divorced from goodwill, violated § 1060(a)(1) and § 2.133(a), and that UNIP's common law rights were unenforceable because it did not intend to offer certain services. Game Plan also contended the Board erred in excluding evidence not properly introduced during trial and sought judicial notice of the underlying record.

• UNIP argued that the 2019 Assignment properly transferred both the mark and all associated goodwill, did not constitute an assignment in gross, and that UNIP had valid and enforceable common law rights. UNIP contended that motives for assignment during litigation are irrelevant and that the assignment of common law rights in connection with clothing was valid and sufficient to establish priority.

Decision of the Court and Reasons

The Federal Circuit affirmed the TTAB's decision. The court held that the 2019 Assignment did not constitute an assignment in gross because it expressly transferred the mark together with the goodwill of the business, UNIP's use was substantially similar to Ms. Alex's use, and both companies shared a common purpose and audience focused on the well-being of athletes. The court found that § 1060(a)(1) does not prohibit the assignment of preexisting common law rights to an already-used mark, only restricting assignment of pending intent-to-use applications before use is alleged. The court determined that § 2.133(a) governs amendments to pending applications or registrations subject to cancellation and does not govern the independent transfer of common law rights, making procedural limitations on amending applications irrelevant to the priority analysis. The court affirmed the Board's exclusion of evidence not properly submitted during trial, finding that Game Plan failed to follow procedural requirements and the Board did not abuse its discretion. The registration for Game Plan's mark was canceled and its opposition to UNIP's intent-to-use applications was dismissed.

In re Estate of Betty Kay Kalisty

C.A. No. 2021-0755-LWW

Court of Chancery of the State of Delaware, Vice Chancellor Lori W. Will

Relevant Facts

• Walter and Betty Kalisty were a married couple who resided in Clayton, Delaware; Walter had children and grandchildren from a prior marriage, and Betty had no children

• In July 2000, Walter and Betty drafted a joint 'Last Will and Testament' naming David D. Hansen as executor of their estates

• The will provided bequests of $1,000 each to two of Walter's grandchildren, with the remaining estate to be distributed in one-third shares to each of Walter's daughters and one-sixth shares to each of Walter's sisters

• The will included a declaration of joint ownership stating that all assets were jointly owned and that upon death of either spouse, joint ownership would revert to the surviving spouse

• Walter gave Hansen an unsigned copy of the will and told him the original would be signed, notarized, placed in a sealed envelope in a metal box under Walter's desk, but Hansen never witnessed the execution nor saw a signed copy

• Walter died on October 9, 2014; Hansen did not open an estate believing the joint will was valid and would take effect upon Betty's death

• Betty remained in the marital home; Hansen visited her periodically as promised, finding the house eventually filled with debris; their discussions about the will were limited to assuring her that Walter's heirs could not take the house

• Betty died on January 17, 2020; Hansen took a month to locate the metal box but the will was not inside it, and after searching extensively through the house, the sealed envelope containing the original will was found but the will was not in the envelope

• Hansen was appointed administrator of Betty's estate and filed an inventory in June 2020 showing remaining assets worth approximately $216,000 in real property and $13,382.32 in other property

• On September 2, 2021, Hansen filed a petition seeking permission to sell the marital home (which he did, netting $144,632.52 for the estate on January 25, 2023) and requesting instruction on estate distribution

Legal Issues

• Whether the unsigned draft will of Walter and Betty Kalisty is valid and enforceable under Delaware law, which requires a will to be signed by the testator and attested to by at least two credible witnesses

• Whether the court should exercise equitable power to reform the unsigned will under the doctrine of mutual mistake of fact

• Whether the court should enforce the parties' alleged oral contract to make a will under Delaware law's heightened burden of proof

Positions of the Parties

• Hansen, as executor, argued that the unsigned draft will should be enforced in substance despite not meeting statutory requirements. He advanced two alternative grounds: (1) the court should exercise equitable power to reform the will based on mutual mistake of fact, as Walter and Betty believed they were entering into a valid will, and (2) the court should enforce the parties' alleged oral contract to make a will, citing partial performance exception when Betty continued residing in the marital home after Walter's death.

• The State of Delaware, through the Office of Unclaimed Property, appeared because remaining assets would escheat to the state if the will was deemed invalid. The office took no position on how assets should be distributed. Walter's heirs and Betty's estate had different interests, with Walter's children seeking to claim assets that would otherwise go to the state.

Decision of the Court and Reasons

Vice Chancellor Lori W. Will held that the joint unsigned will of Walter and Betty Kalisty is void as a matter of Delaware law because it does not meet the statutory requirements of being signed by the testator and attested to by at least two credible witnesses under 12 Del. C. § 202. The court rejected Hansen's mutual mistake doctrine argument, finding no evidence that Walter and Betty were mistaken about the language of the will and noting that the court cannot modify the document to add signatures or witnesses required for validity. The court also rejected the oral contract argument, finding insufficient partial performance under Delaware law because Betty's continued residency in the marital home would have occurred independent of the will by operation of law, as surviving spouses have tenancy by the entirety rights. Therefore, the property cannot be distributed according to the unsigned will, and the remaining estate proceeds from the sale of the marital home must escheat to the State of Delaware.