Mike Smith weighs in on a complex trademark battle between LeBron James and a Maryland-based nonprofit in Bloomberg Law

BSKB’s Michael Smith weighs in on a complex trademark battle between LeBron James and a Maryland-based nonprofit. Read below or click the link to read more about this case. https://lnkd.in/e3XYVdt

LeBron Tries to Outmaneuver Charity Over ‘More Than An Athlete’

Bloomberg Law, IP News

Feb. 26, 2020, 6:31

  • Basketball star in complex trademark battle with youth nonprofit

  • Lawsuit could hinge on goods classification, commercial use

LeBron James’ spat with a youth nonprofit over a simple t-shirt slogan is morphing into a complex trademark battle that could hinge on whether his acquisition of an earlier mark protects him from infringement charges.

Game Plan Inc., a youth development advocacy organization in Maryland, last week sued James’ company Uninterrupted LLC, Nike Inc., and ESPN for allegedly infringing its registered “I Am More Than An Athlete Game Plan GP” trademark that it applied for in 2016.

The lawsuit followed Game Plan’s ongoing, 15-month-old bid to block James from registering several “More Than An Athlete” trademarks with the trademark office. James applied for the trademarks the month after donning the slogan on a shirt at a game in February 2018 after a Fox News host said James should “shut up and dribble” rather than opine about politics. Five months later, he also sought to outflank Game Plan by acquiring a “More Than An Athlete” trademark—covering a different class of goods—from a marketer, who registered it in 2013.

The conflict could provide insight on a variety of trademark boundaries—the degree of separation between competing marks’ products, whether the t-shirt slogans actually function as a trademark, and to what extent consumers might be confused over product origin.

It will also test the limits of how far along a Trademark Trial and Appeal Board case needs to be for a federal district court to let it conclude rather than pausing it until the court’s case concludes.

“There are a lot of bells and whistles on this thing,” said Brian Michalek of Saul Ewing Arnstein & Lehr LLP, adding he thinks the case won’t likely be dismissed quickly.

Nike Apparel With Slogan

A central issue in the lawsuit will be determining the relevance of the “More Than An Athlete” trademark that James acquired in August 2018. That mark could give him the upper hand on priority. Nike, in partnership with James, now sells apparel with the slogan.

The 2013 mark covers “publicity and sales promotion services.” Game Plan’s trademark covers “charitable fundraising by means of selling t-shirts.” Trademarks generally only apply to the class of goods or services in the registration. A consumer confusion analysis, critical to establishing infringement, would consider whether two competing marks’ claimed goods are close enough that their similarity may leave consumers confused about who produced or endorsed the products.

Uninterrupted essentially hopes to show that a buyer of charity t-shirts might think that the producer of the t-shirts might also be a seller of promotional services.

“I think the difference between goods and services is going to be key to whether there’s likelihood of confusion or not. That’s where I think there’s ambiguity,” Michalek said. “The question for trademark infringement is whether or not the public purchasing both items is likely to be confused, or associate one with the other.”

Despite somewhat different product classifications, Game Plan and Uninterrupted’s marks may come close enough that consumers might still be confused between the 2013 mark and Game Plan’s mark, trademark attorney Peter Toren said.

“I think there’s a pretty strong case for a counterclaim by LeBron against the nonprofit, even though they’re in different services,” Toren said.

Game Plan has to walk a fine line on consumer confusion in the multifaceted case, trademark attorney Mike Smith of Birch Stewart Kolasch & Birch LLP said. It wants to argue consumers wouldn’t confuse its mark’s services with the 2013 mark to duck the priority argument, but also that consumers would confuse Game Plan’s mark with Uninterrupted’s, to win its infringement claim, Smith said.

More Than a T-Shirt?

Game Plan alleges James saw its shirts worn by students courtside during warmups of a 2017 Washington Wizards game against James’ team at the time, the Cleveland Cavaliers. But trademark rights primarily depend on who began using the mark first—not who created it.

Attorneys said a big question in the case would be whether either party uses their mark to signal who made a product. Slogans on t-shirts don’t themselves qualify as a determinant of trademark functionality.

“There’s a question of whether the plaintiff is using the phrase as a trademark, rather than as ornamentation on the t-shirts,” Smith said. “The flipside of that is whether defendants are using the accused phrase commercially, or just making a social statement.”

How Many Shirts Sold?

Game Plan’s limited sales put it in a particularly tight spot. It said it sold 40 shirts, but it only provided to the TTAB evidence of selling three shirts, according to Uninterrupted.

There’s no fixed sales requirement, but single-digit sales suggest Game Plan may not be “using the mark as contemplated in the trademark statute,” Michalek said.

Meanwhile, what TTAB will do next also remains a variable in their battle. James applied for the trademarks in 2018; Game Plan’s filed its opposition to them a few months later.

TTAB hasn’t decided on Game Plan’s challenge of Uninterrupted’s applications or Uninterrupted’s bid to cancel Game Plan’s mark. And the proceedings could be stayed for new litigation in district court, which could ultimately overrule it anyway.

Uninterrupted, through a statement issued last week, said Game Plan’s lawsuit is “meritless” and “contains numerous factual inaccuracies.”

Game Plan founder Sam Sesay said he still has “huge respect” for James and has offered to settle the case, but that James’ legal team declined.

“This is not where we wanted to go at all,” Sesay said. “I had to protect the trademark. I saw them making millions of dollars on it. We had bigger plans to use that trademark to sell clothing items as the main revenue generator for our nonprofit.”

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Roger Yu at ryu@bloomberglaw.com; Cheryl Saenz at csaenz@bloombergtax.com. To read more articles log in. To learn more about a subscription click here.

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