[00:00:05] Speaker 04:
407, game plan versus uninterrupted.

[00:00:12] Speaker 04:
We're ready whenever you are, Mr. Jones.

[00:00:16] Speaker 01:
May I please the court?

[00:00:18] Speaker 01:
Good morning.

[00:00:19] Speaker 01:
I'm Ryan Jones, counsel for Game Plan Incorporated, along with Mr. Luis Mastroianni as of counsel.

[00:00:26] Speaker 01:
Today we ask for the December 14, 2023 final decision by the Trademark Trial and Appeals Board to be reversed.

[00:00:34] Speaker 01:
In consideration of all facts, admissions, and procedural steps on the record during the opposition action below, the board erred by favoring UNIP's untimely assignment under Chapter 37 of the Code of Federal Regulations, subsection 2.133a, claiming priority from an assignment that violated 15.

[00:00:54] Speaker 04:
So there's a lot of new, we don't get that many trademark cases.

[00:00:57] Speaker 04:
And there's a lot of terms and a lot of arguments made here that I've

[00:01:02] Speaker 04:
I've rarely seen.

[00:01:04] Speaker 04:
And that goes to this gross assignment thing and to this anti-trafficking thing.

[00:01:09] Speaker 04:
If we conclude that it was a legitimate assignment, which included goodwill, and it happened whatever date it happened,

[00:01:21] Speaker 04:
Do you just lose?

[00:01:22] Speaker 04:
Is that the issue that's really the gravamen of what your complaint is?

[00:01:27] Speaker 01:
It's priority.

[00:01:28] Speaker 01:
Yes.

[00:01:28] Speaker 01:
So priority matters here.

[00:01:31] Speaker 01:
And we believe that the rule, 2.133A, is preclusive to the untimely transfer.

[00:01:41] Speaker 01:
And that stops it.

[00:01:43] Speaker 01:
It cannot be.

[00:01:45] Speaker 02:
Who wasn't the 2019 transfer valid?

[00:01:51] Speaker 01:
Say that one more time, sorry.

[00:01:52] Speaker 02:
The 2019 transfer.

[00:01:54] Speaker 02:
Why wasn't it valid?

[00:01:57] Speaker 01:
When you look to 2.133A, it reads.

[00:02:02] Speaker 02:
You're going to have to speak up a little bit.

[00:02:03] Speaker 01:
OK, it reads, an application such as uninterrupted 6 to use applications

[00:02:14] Speaker 01:
They're subject to an opposition that opposition started on November 28, 2018, about two months prior to the acquisition that they made in 2019.

[00:02:26] Speaker 01:
The start of that action

[00:02:32] Speaker 01:
closes the universe.

[00:02:34] Speaker 01:
It gives all the parties notice of this is what is before the board.

[00:02:40] Speaker 01:
It closes the record.

[00:02:41] Speaker 01:
Going and trying to assume prior rights from another third party is like trying to rewrite history.

[00:02:53] Speaker 00:
Well, counsel, do you agree that the plain language of the assignment itself indicates the transfer of goodwill here?

[00:03:01] Speaker 01:
what they did to acquire the rights, meaning what you and I can.

[00:03:06] Speaker 00:
Listen to my question.

[00:03:07] Speaker 00:
Just answer it first, and then you can go back into your field.

[00:03:10] Speaker 00:
Do you agree that the plain language of the assignment itself indicates a transfer of goodwill, looking at the actual language of the assignment?

[00:03:20] Speaker 01:
We have called it into question based on evidence in the record.

[00:03:25] Speaker 01:
However, just the plain language, the assignment, we would say that,

[00:03:32] Speaker 01:
We turn to the law, but we don't say that the actual goodwill, based on that agreement between the parties, we don't call that into question.

[00:03:40] Speaker 00:
Well, in terms of, if I'm looking at the correct page, is appendix page 263 the right page?

[00:03:46] Speaker 00:
Do you have access to the appendix?

[00:03:48] Speaker 01:
I do, but not at the table with you know.

[00:03:51] Speaker 00:
Well, if you've got it somewhere, grab it from the bench or wherever.

[00:03:55] Speaker 00:
I think that'd be helpful for a discussion.

[00:03:57] Speaker 00:
OK.

[00:03:57] Speaker 00:
Do you have a copy of it?

[00:04:12] Speaker 03:
Page 263, Your Honor.

[00:04:14] Speaker 00:
Appendix Page 263 was the one that I was asking.

[00:04:16] Speaker 00:
So thank you for passing that through as well.

[00:04:18] Speaker 00:
I appreciate that.

[00:04:21] Speaker 00:
So tell me if I'm looking at the correct information here.

[00:04:25] Speaker 00:
But what I was looking at was on Appendix Page 263, where it talks about purchase IP assets and specifically says that together with the good will of the business,

[00:04:38] Speaker 00:
And I was interpreting that as at least as showing that the plain language of the agreement itself indicates a transfer of goodwill.

[00:04:44] Speaker 00:
Is this the right place for me to be examining?

[00:04:47] Speaker 01:
You think no.

[00:04:49] Speaker 00:
Oh, well, where do you think I should be looking instead?

[00:04:51] Speaker 00:
Is there a different page you want to point me to?

[00:04:53] Speaker 01:
Well, as far as the goodwill, we turn to certain case law that says just because.

[00:04:58] Speaker 00:
Wait, I want to look at the actual agreements themselves.

[00:05:01] Speaker 00:
I understand that you also want to argue some case law.

[00:05:03] Speaker 00:
But can I look at the actual, if there's something that you think is more applicable in the page 263 for the actual language of the assignment, can you tell me what page that is in the record?

[00:05:13] Speaker 01:
Your Honor, I believe that this language of the assignment is the only language, the plain language, speaks to the intent of the parties, yes.

[00:05:21] Speaker 00:
OK, so you agree that what's on 263 records the language of the assignment?

[00:05:25] Speaker 00:
Yes.

[00:05:25] Speaker 00:
OK, thank you.

[00:05:27] Speaker 00:
Did Game Plan also admit that the mark that UNIP acquired

[00:05:32] Speaker 00:
from MTAA has priority over Game Plans Mark.

[00:05:37] Speaker 01:
I don't believe we admitted that.

[00:05:38] Speaker 01:
We believe that that mark in class 35 was filed before Game Plans Mark, which was filed in 2016.

[00:05:47] Speaker 01:
Game Plans Mark, filed in 2016, was granted by the United States Department of Trademark Office, allowing it to be federally registered.

[00:05:58] Speaker 01:
and gave it protection to sell its t-shirts for the benefit of the nonprofit.

[00:06:04] Speaker 00:
So let me, I want to follow up on this, because I read the record, and I thought I read in the briefing, that there was a complaint paragraph, paragraph six on JA-97, that was asking about priority.

[00:06:19] Speaker 00:
And then there was, I believe in the answer and admission,

[00:06:23] Speaker 00:
on page JA108, paragraph 6, is said admitted.

[00:06:28] Speaker 00:
Do you disagree that that is the correct state of the record?

[00:06:32] Speaker 01:
I do.

[00:06:33] Speaker 00:
OK, why do you disagree?

[00:06:35] Speaker 01:
No, I agree that that's what the record says.

[00:06:37] Speaker 00:
OK, thank you.

[00:06:39] Speaker 04:
So is the other issue about intent to use, which seems to be a legal question about the anti-trafficking stuff, the counterclaim here is not an intent to use.

[00:06:53] Speaker 04:
So that's why, I mean, you're resting on this filing of an intent to use application.

[00:07:01] Speaker 04:
But that's not what the counterclaim is based on.

[00:07:04] Speaker 04:
The counterclaim is based on the purchase of this earlier trademark, right?

[00:07:10] Speaker 01:
Yes.

[00:07:11] Speaker 04:
And we believe that- So where's the problem under the anti-trafficking statute?

[00:07:16] Speaker 01:
That's what we're talking about.

[00:07:18] Speaker 01:
So we believe that

[00:07:21] Speaker 01:
that purchase is void based on the plain language of 15 USC 1060A.

[00:07:29] Speaker 01:
It reads that a registered mark or mark for which an application to register has been filed shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use and symbolized by the mark.

[00:07:44] Speaker 01:
Notwithstanding the preceding sentence, no application, UNIP's application,

[00:07:50] Speaker 01:
To register a mark under section 1051B, that's their intent to use application, of this title shall be assignable prior to the filing of an amendment under section 151C of this title to bring the application into conformity with subsection 1051A.

[00:08:10] Speaker 01:
So what they told the world when they filed their six applications is that we haven't used these marks yet.

[00:08:17] Speaker 01:
We plan to.

[00:08:19] Speaker 01:
And the rules of the trademark trial.

[00:08:21] Speaker 04:
Yeah, but there was an intervening event, which was the assignment.

[00:08:24] Speaker 01:
And that assignment occurred after the opposition.

[00:08:27] Speaker 01:
And we believe because the opposition triggers a close of the universe,

[00:08:33] Speaker 01:
UNIP cannot create a workaround and go find another mark to try to gain priority to game plan.

[00:08:41] Speaker 01:
It did not have priority to game plan.

[00:08:43] Speaker 01:
That assignment is void and should be used in using section 2.133M.

[00:08:50] Speaker 04:
And the statutory provision you're pointing to is

[00:08:55] Speaker 01:
Chapter 37 of the Code of Federal Regulations, subsection 2.133A.

[00:09:02] Speaker 01:
It states, an application, such as UNIP, intent to use application, which are subject to an opposition, may not be amended in substance.

[00:09:13] Speaker 01:
And we believe that the purchase made on February 22, 2019 was such an amendment.

[00:09:23] Speaker 00:
So you're viewing the assignment itself as being an amendment within the context of 37 CFR 2.133?

[00:09:31] Speaker 01:
Yes, Your Honor.

[00:09:33] Speaker 00:
And what if we disagree with you if the assignment itself is an amendment within that CFR provision?

[00:09:40] Speaker 00:
If we disagree, do you agree that you lose the case?

[00:09:42] Speaker 01:
No.

[00:09:43] Speaker 00:
OK, so why do you say you don't lose the case?

[00:09:45] Speaker 01:
Because in reading through 15 USC 1060 A1,

[00:09:51] Speaker 01:
You get to the third sentence, which requires that these intent to use applications must be amended.

[00:10:02] Speaker 01:
And 1051C, subsection two.

[00:10:06] Speaker 01:
15 USC, 1051C reads,

[00:10:09] Speaker 01:
Amendment of application under subsection B to conform the requirements of subsection A at any time during examination of an application filed under subsection B. An applicant who has made use of the mark in commerce and UNIP now says it alleges it has use in the mark by assignment from Ms.

[00:10:27] Speaker 01:
Alex

[00:10:29] Speaker 01:
may claim benefits of such purposes of this chapter by amending his or her application to bring it into conformity with the requirements of subsection A. So is there something in 15 USC section 1051 that you're saying requires amendment?

[00:10:47] Speaker 00:
I'm trying to follow the argument you're making right now.

[00:10:49] Speaker 01:
Yeah, so when people file for their trademarks, they're filing under two different

[00:10:59] Speaker 01:
concepts.

[00:11:00] Speaker 01:
One is that they're already using the mark and they want the protection from the trademark office.

[00:11:07] Speaker 01:
Or two, which is what UNIP did, they're saying

[00:11:12] Speaker 01:
We're going to use this mark.

[00:11:14] Speaker 01:
And when we do use this mark, we want the protection dating back to the day of filing our application.

[00:11:22] Speaker 01:
But we'll start the application process, and then we'll go back once we start putting the product into the stream of commerce and amend.

[00:11:29] Speaker 00:
What about the third party that used the mark even before, and that's the party that they purchased the mark from?

[00:11:36] Speaker 00:
Are you saying that is irrelevant, the use before by the third party?

[00:11:41] Speaker 01:
It happened.

[00:11:42] Speaker 01:
Their use, that prior person's mark, was used.

[00:11:46] Speaker 01:
However, UNIP cannot access that use and say that they've used it as she used it based on the language, because they would need to tell the Patent and Trademark Office by amending their application or using it.

[00:12:01] Speaker 04:
Because they had filed an intent to use that would preclude them from getting a common law assignment?

[00:12:08] Speaker 01:
Yes.

[00:12:09] Speaker 04:
And that's OK.

[00:12:10] Speaker 04:
Well, you're into your rebuttal.

[00:12:11] Speaker 04:
Why don't we hear from the other side?

[00:12:13] Speaker 04:
OK.

[00:12:15] Speaker 04:
And we'll keep the rebuttal time.

[00:12:17] Speaker 01:
All right.

[00:12:17] Speaker 01:
Thank you.

[00:12:25] Speaker 03:
Good morning, Your Honors, and I please the court.

[00:12:27] Speaker 03:
My name is Howard Shire, and I'm from Trappin Pepper Lock.

[00:12:31] Speaker 03:
This is a straightforward, not difficult case at all to decide in terms of- Can you get the discussion we've been having for the last five minutes?

[00:12:39] Speaker 04:
Yes.

[00:12:39] Speaker 04:
So why don't you give us your input?

[00:12:41] Speaker 03:
Sure.

[00:12:42] Speaker 03:
Sure.

[00:12:42] Speaker 03:
It's clear that for purposes of our counterclaim, this party's reason likely to confusion.

[00:12:47] Speaker 03:
The undisputed facts lead to the conclusion that there was a valid assignment.

[00:12:52] Speaker 03:
It's really the only issue on this appeal.

[00:12:55] Speaker 03:
The other side does not dispute that the mark was viewed.

[00:12:58] Speaker 04:
Well, yeah, but they're raising issues that deal with what you're permitted to do under the statute.

[00:13:03] Speaker 03:
The statute in no way prohibits assignment of a common law mark.

[00:13:08] Speaker 03:
What Mr. Jones is talking about is a situation where a mark, an intention to use application, is assigned before there's a statement of use filed.

[00:13:20] Speaker 03:
That's what is prohibited.

[00:13:22] Speaker 03:
But that's not our situation at all.

[00:13:24] Speaker 03:
Nothing in the statute or the CFR that he cites prohibits assignment of a common law trademark from somebody else.

[00:13:31] Speaker 03:
There was no amendment.

[00:13:32] Speaker 04:
Even after an intent to use application?

[00:13:35] Speaker 03:
Has been filed.

[00:13:36] Speaker 03:
Yes.

[00:13:37] Speaker 03:
Nothing prohibits an assignment of prior common law rights to an intent to use applicant.

[00:13:44] Speaker 03:
We never amended any of our applications.

[00:13:46] Speaker 03:
In fact, the assignment issued, the common law rights for T-shirts,

[00:13:52] Speaker 03:
That certainly wouldn't apply to all six of the applications, and some of them have nothing to do with t-shirts.

[00:13:58] Speaker 03:
But the black letter law is that an assignment of a trademark enables the assignee to stand in the shoes of its assigneur, provided that both the assigneur and assignee use the same trademark, more than an athlete, and they use it for the same product, which in this case is t-shirts.

[00:14:15] Speaker 03:
They both use the same marks for the same products.

[00:14:17] Speaker 02:
There's a sketch in 1060.

[00:14:19] Speaker 02:
Does it limit the assignment of common law rights?

[00:14:22] Speaker 03:
No.

[00:14:23] Speaker 03:
No, in no way.

[00:14:26] Speaker 03:
The other side has cited no case which prohibits assignment of common law rights to an IT applicant.

[00:14:33] Speaker 03:
We never amended any of our applications.

[00:14:37] Speaker 03:
That's undisputed.

[00:14:38] Speaker 00:
Opposing counsel appears to be arguing that the assignment was effectively should be treated as an amendment.

[00:14:43] Speaker 00:
What's your response to that?

[00:14:45] Speaker 03:
It's not an amendment.

[00:14:46] Speaker 03:
We never amended the applications.

[00:14:48] Speaker 03:
That's undisputed.

[00:14:49] Speaker 03:
If you look at the file histories,

[00:14:53] Speaker 03:
You're allowed, for example, when you file intent to use application, when you get around to filing your statement of use, nothing prohibits you from asserting a date of first use prior to the date you filed your intent to use application.

[00:15:05] Speaker 03:
And assignment is valid, as I said.

[00:15:08] Speaker 03:
As long as the assignment on assignee, we're using the same trademark for the same goods.

[00:15:12] Speaker 00:
And that's exactly what happened here.

[00:15:14] Speaker 00:
When I was having the conversation with opposing counsel, was JA263 the appropriate page to look at for the assignment language?

[00:15:21] Speaker 03:
That is appropriate page assignment.

[00:15:24] Speaker 03:
It explicitly covers common law marks.

[00:15:27] Speaker 03:
as well as a registration that's probably not relevant to this particular case at the moment.

[00:15:32] Speaker 04:
I just want to make sure I understand what everybody's saying here, which is that his view is, under the statutory or regulatory provisions he cited, that because they did this intent to use application,

[00:15:45] Speaker 04:
you were foreclosed from doing the assignment and then coming in and trying to upend stuff by the assignment.

[00:15:53] Speaker 04:
Is that how you understand his argument?

[00:15:56] Speaker 03:
That's how I understand his argument, but it's not.

[00:15:58] Speaker 04:
And then your answer is?

[00:15:59] Speaker 03:
That's not, nowhere in the statute do you find that.

[00:16:04] Speaker 03:
Assignments are commonly made of trademarks, and the assignments are perfectly valid, assuming the assignee uses the same mark for the same goods as the assignee, and then the assignee has to stand on the shoes of the assignee.

[00:16:21] Speaker 03:
For now, that's what happened in the dial mattress case and in the money store case that we have cited.

[00:16:26] Speaker 02:
Is an assignment effective if there's been no prior use of a trademark that's been assigned?

[00:16:31] Speaker 03:
If there's no prior use, it's not a valid assignment.

[00:16:36] Speaker 03:
There's no goodwill then.

[00:16:37] Speaker 03:
So you have to always assign the goodwill.

[00:16:39] Speaker 02:
That would be a demonstration of goodwill.

[00:16:41] Speaker 02:
Is there any evidence in the record of the goodwill here?

[00:16:43] Speaker 03:
Oh, sure.

[00:16:44] Speaker 03:
Yes, there's abundant evidence of uses of the mark by Deandra Alex from at least 2013 to 2018 for t-shirts, at least, and other products.

[00:16:58] Speaker 03:
And that's what the goodwill is.

[00:17:00] Speaker 03:
Goodwill is generated by consumers seeing the trademark having been in use.

[00:17:06] Speaker 03:
And the goodwill was assigned.

[00:17:07] Speaker 00:
So the opposing council was making an argument, at least as I understand it, that the assignment was an intervening event that prevented you all from relying on that goodwill that occurred previously by the third party.

[00:17:22] Speaker 00:
What's your response to that?

[00:17:24] Speaker 03:
Once again, nothing in the statute prevents an applicant, an intent to use applicant, from acquiring prior rights.

[00:17:32] Speaker 03:
It's just not there.

[00:17:33] Speaker 03:
What he is talking about is an intent to use applicant.

[00:17:36] Speaker 03:
I think he's confused about it.

[00:17:38] Speaker 03:
An intent to use applicant cannot assign its application before filing a statement of use.

[00:17:47] Speaker 03:
But that doesn't apply to Deandra Alex's common law mark.

[00:17:51] Speaker 03:
She was not based her application.

[00:17:52] Speaker 04:
Is that what these provisions he's citing are intending to... Yeah, it all concerns intent to use applications.

[00:17:58] Speaker 03:
And the fact of the matter is that if you want to assign an intent-to-use application, it's very difficult to do that if there's been no statement of use to follow the trademark office.

[00:18:07] Speaker 03:
And the cases he cites are exactly those kinds of cases, which are classic invalid assignments of an intent-to-use application.

[00:18:14] Speaker 03:
But here, R. Asinore had no intent-to-use application, just had regular common law rights, which she was free to assign, which she did assign here.

[00:18:24] Speaker 03:
Remember, it's only the assignment's valid if the mark is used by both parties, the Aston Martin S&E, for the same mark for the same goods.

[00:18:32] Speaker 03:
And that's exactly what happened here.

[00:18:34] Speaker 03:
The other side has not disputed that Deandra Alex used her mark from at least 2013 to 2018 in connection with at least t-shirts and wristbands.

[00:18:48] Speaker 03:
which makes the assignment valiant how to step into the shoes of Ms.

[00:18:53] Speaker 03:
Alice, including her first shoes dating back to at least 2013 for t-shirts.

[00:19:00] Speaker 03:
So once again, the only defense he has is that the assignment is somehow invalid, and there's no ground for asserting that.

[00:19:08] Speaker 03:
In the first place, as Judge Cunningham pointed out in her questioning, it's undisputed that a game plan admitted

[00:19:15] Speaker 03:
that my client has priority.

[00:19:17] Speaker 03:
That's in the appendix pages 97, when we made that allegation of paragraph 6 of our counterclaim.

[00:19:23] Speaker 03:
And Game Plan's answer admitted this on appendix page 108.

[00:19:28] Speaker 03:
The other side has never attempted to amend this answer.

[00:19:34] Speaker 03:
We made this argument in our appellate brief.

[00:19:37] Speaker 03:
And in their reply brief, the other side ignored it.

[00:19:39] Speaker 03:
So I'm happy to think that they effectively have conceded the validity of our argument on the priority based on the pleadings and their answer.

[00:19:49] Speaker 03:
The assignment does not constitute any sort of amendment of our applications.

[00:19:54] Speaker 03:
We've never filed any amendment with the Patent and Trademark Office.

[00:19:58] Speaker 03:
The applications are still sitting there pending the outcome of this case.

[00:20:01] Speaker 03:
So we've never amended or tried to amend any of the applications.

[00:20:06] Speaker 03:
And he cites no case for the proposition he's asserting that an assignment of common law rights constitutes an amendment of a pending ITU application.

[00:20:16] Speaker 03:
There are formal ways of amending an ITU application.

[00:20:19] Speaker 03:
My clients followed none of them.

[00:20:20] Speaker 03:
So there's clearly been no amendment.

[00:20:23] Speaker 03:
He also argued in his brief there's been abandonment of our client's trademark.

[00:20:28] Speaker 03:
But that's just not true.

[00:20:29] Speaker 03:
There's two tests, two part tests, for abandonment.

[00:20:32] Speaker 03:
One that has to be non-use for a period of time.

[00:20:36] Speaker 03:
And secondly, it has to be intent not to resume use of the mark.

[00:20:39] Speaker 03:
Neither one of these is satisfied here.

[00:20:42] Speaker 03:
It's undisputed that the miscellaneous use of the mark up through 2018

[00:20:46] Speaker 03:
February 2019, the mark was assigned to my client.

[00:20:52] Speaker 03:
So there's no period of non-use.

[00:20:55] Speaker 03:
There was no intent not to resume use.

[00:20:57] Speaker 03:
Indeed, she protested to Mr. Sam Sesse, the principal of Gameplan, about his proposed use of his trademark.

[00:21:05] Speaker 03:
But he used it nonetheless.

[00:21:08] Speaker 03:
Now, there's also an argument my adversary makes about taking judicial notice.

[00:21:12] Speaker 03:
He wants this court to take judicial notice of the entire record down below in the TKB, but he cites no authority for such a broad use of judicial notice.

[00:21:23] Speaker 04:
Well, speaking of that, the issue about not allowing him to use information in the record because he was given an opportunity to supplement the record and he didn't, is that what went down?

[00:21:34] Speaker 03:
I wouldn't say supplement the record, Your Honor.

[00:21:37] Speaker 03:
I would say he never put in any evidence during his specified testimony period.

[00:21:41] Speaker 03:
And he was warned in advance, even by the TKB.

[00:21:44] Speaker 04:
Would that have made any difference?

[00:21:46] Speaker 03:
I mean, I'm not quite... Well, he could have put in...

[00:21:49] Speaker 03:
I don't know what evidence he would have put in, but it could make a difference.

[00:21:53] Speaker 03:
Right now, there's no evidence in the record concerning a game plan except for their federal registration.

[00:22:02] Speaker 04:
So what evidence would have been useful to his arguments here if they established a use before?

[00:22:09] Speaker 03:
Yeah, he alleges common law use, for example, but there's no evidence of any common law use by his client.

[00:22:15] Speaker 03:
uh... i don't know what you should put in a lot of that kind of i don't know what evidence he could have or would have uh... put in but the fact matter is that he put in

[00:22:27] Speaker 03:
By doing so, he's asking, by his request for judicial notice, it's unprecedented.

[00:22:31] Speaker 03:
We're aware of no case.

[00:22:33] Speaker 03:
And Gameplan decided no case in which this court took judicial notice of an entire record down below when Gameplan hadn't full and fair opportunity to put in its evidence before the TTAB.

[00:22:46] Speaker 03:
And they were even warned by the TTAB at page 367 of the appendix that, hey, if you don't put it in,

[00:22:52] Speaker 03:
you're not going to be able to put in any evidence.

[00:22:54] Speaker 03:
You've got to put in the timeline, in the relevant time period.

[00:22:58] Speaker 03:
And if this court were to allow a game plan to now take traditional notice of the entire record below, including whatever pretrial motions were filed, it would effectively vitiate the careful and longstanding procedures that TTAB has

[00:23:19] Speaker 03:
for taking testimony.

[00:23:21] Speaker 03:
As you're probably aware, the TTAB has various testimony periods for both sides.

[00:23:26] Speaker 03:
And in effect, you would be saying that, hey, it's OK.

[00:23:30] Speaker 03:
You don't have to abide by the TTAB's rules.

[00:23:33] Speaker 03:
We'll take traditional self-management appeal of anything that you didn't put in.

[00:23:36] Speaker 03:
and which is just would upend proceedings terribly before the TTAB and in effect vitiate their rules on the taking of testimony and could apply to other administrative bodies such as the PTAB for example.

[00:23:50] Speaker 03:
So it would be, I think it would be a terrible thing if you were to take traditional notice of the entire record below, notwithstanding game plan steering that provide any testimony even especially because they were warned by the TTAB that might happen.

[00:24:04] Speaker 03:
They also attack another grounds that they assert for supposedly invalidating the assignment is our client's motive for acquiring the mark.

[00:24:13] Speaker 03:
But that doesn't matter.

[00:24:14] Speaker 03:
Under the dial a mattress and the money store case we cited, it's perfectly acceptable for a party to acquire prior trademark rights so they can establish their business and they can overcome a claim of infringement.

[00:24:30] Speaker 03:
So it doesn't matter what our motive might have been.

[00:24:33] Speaker 03:
And there's no evidence, by the way, in the record of what our motive was.

[00:24:37] Speaker 03:
It was a valid assignment given our subsequent use of this, of the mark, for the same goods as Ms.

[00:24:44] Speaker 03:
Alex used it.

[00:24:46] Speaker 03:
The other side also makes the argument that this is an assignment in gross.

[00:24:50] Speaker 03:
That was pointed out during his argument.

[00:24:52] Speaker 03:
The assignment at issue here specifically recites a transfer of goodwill, which is how goodwill is frequently transferred in a trademark deal.

[00:25:03] Speaker 03:
All he does is he cites inapposite cases, as I said, involving an assignment of an ITU application before a statement of use is filed with the PTO.

[00:25:15] Speaker 03:
That is clearly an assignment in gross and is invalid.

[00:25:21] Speaker 03:
So given all these facts and the legal standard, it's perfectly appropriate for my client to tack on to the prior use of more than athlete for t-shirts, going back to Ms.

[00:25:34] Speaker 03:
Alex's first use in 2013.

[00:25:37] Speaker 03:
That's all you need.

[00:25:39] Speaker 03:
As I said, the same mark, same goods.

[00:25:41] Speaker 03:
That compels a valid assignment.

[00:25:44] Speaker 03:
Not only that, but here, my client went ahead at the time of the February 2019 assignment.

[00:25:50] Speaker 03:
We hired Deandra Alex, the predecessor in interest, as a consultant, specifically to help uninterrupted with the more than athlete business.

[00:25:59] Speaker 03:
So the continuity and the goodwill from the assignment and the retention

[00:26:05] Speaker 03:
of Ms.

[00:26:07] Speaker 03:
Alex.

[00:26:08] Speaker 03:
Both parties use the same mark, not just for the same good, but basically for the same purposes.

[00:26:13] Speaker 03:
The idea that athletes have a story to tell beyond whatever they accomplish on the playing field or in the arena.

[00:26:19] Speaker 03:
That's how we've used it.

[00:26:21] Speaker 03:
That's how Ms.

[00:26:23] Speaker 03:
Alex used it.

[00:26:24] Speaker 03:
And it's a perfectly congruent succession of use.

[00:26:31] Speaker 03:
And it's in court with the Black Letter Trademark Principles regarding assignment of a trademark.

[00:26:39] Speaker 03:
This is not a unique situation.

[00:26:41] Speaker 03:
It happens frequently.

[00:26:44] Speaker 04:
Thank you.

[00:26:44] Speaker 03:
OK.

[00:26:45] Speaker 03:
Thank you, Your Honor.

[00:26:59] Speaker 01:
Your Honor, you heard about common law rights.

[00:27:02] Speaker 01:
Common law rights were addressed in the board's decision saying that because of

[00:27:08] Speaker 01:
what we raised under 2.133A and 1060, then that federal mark, they ignore and say, well, let's just talk about the common law rights that were transferred.

[00:27:22] Speaker 01:
But those common law rights effectively create the amendment in substance under 2.133A.

[00:27:27] Speaker 04:
But why isn't the assignment the assignment?

[00:27:30] Speaker 04:
I don't think it's an amendment.

[00:27:32] Speaker 04:
It's a separate and used in the counterplane.

[00:27:37] Speaker 04:
They didn't put court to amend the intent to use application with the assignment.

[00:27:43] Speaker 04:
So that's why I'm not appreciating why that comes under the statutory provisions you've told us about.

[00:27:50] Speaker 01:
The opposition started on November 28, 2018.

[00:27:55] Speaker 01:
All of the facts preceding that are what the court should be looking to.

[00:27:59] Speaker 01:
That's what the closed universe is.

[00:28:01] Speaker 01:
when they then filed an answer and counterclaim that puts us at the position of being not only the plaintiff, but the defendant, and the universe closes.

[00:28:09] Speaker 01:
And they've told us now, oh, we've acquired rights in February, two months after the commencement of the action.

[00:28:20] Speaker 01:
The board then cites to...

[00:28:23] Speaker 01:
in quotes that they believe that UNIP was in conversation with Deandra Alex and that conversation

[00:28:38] Speaker 01:
created some sort of intent that they were going to buy it.

[00:28:42] Speaker 01:
Therefore, timing of the transfer is of no moment.

[00:28:46] Speaker 01:
But we disagree.

[00:28:47] Speaker 01:
2.1338 addresses it.

[00:28:50] Speaker 01:
Now, there's been reference to the Dial a Mattress case.

[00:28:53] Speaker 01:
And the Dial a Mattress case, that's in federal court, in federal litigation.

[00:28:57] Speaker 01:
And they argue that when Dial a Mattress

[00:29:00] Speaker 01:
bought an assignment or created an assignment before the board and the patent office granted it, that was somehow a timeliness issue.

[00:29:09] Speaker 01:
But here, our facts are procedurally discernible and factually discernible from the dial of mattress case.

[00:29:17] Speaker 01:
We're before the board asking the board to make a decision on their applications.

[00:29:21] Speaker 01:
We're saying their applications should be denied because they weren't using the mark in commerce.

[00:29:28] Speaker 01:
They had not been.

[00:29:29] Speaker 01:
It was impossible for them to be using the mark prior to Gang Plan.

[00:29:34] Speaker 01:
Gang Plan advertised their product, sold t-shirts from 2016 to 2018 and beyond.

[00:29:44] Speaker 01:
UNIP comes in after the fact.

[00:29:50] Speaker 01:
comes in after the fact and says, we purchased another company.

[00:29:58] Speaker 01:
Therefore, we don't stand in their shoes.

[00:30:00] Speaker 01:
Our issues were decided and that we have priority to UNIP.

[00:30:05] Speaker 01:
And it did.

[00:30:07] Speaker 01:
And they seek to rewrite history and jump in a time machine with the assignment.

[00:30:13] Speaker 01:
Their change is essentially an amendment which does trigger chapter 37.

[00:30:20] Speaker 01:
And even if it doesn't trigger Chapter 37, 2.133a, it triggers 1060, the anti-trafficking rule.

[00:30:29] Speaker 01:
So you can't traffic in marks.

[00:30:31] Speaker 01:
You can't say to us, the Patent and Trademark Office, we're using a mark, and we're going to go and buy another mark in order to gain power and priority so we can defeat gameplay.

[00:30:43] Speaker 01:
It's almost as if these rules were put in place to stop the very thing that they did.

[00:30:49] Speaker 04:
Time's up.