CAFC Upholds TTAB's Grant of Counterclaim for Cancellation: Applicant Proved Priority Through Assignment of Common Law Mark After Proceeding Commenced

The CAFC affirmed the Board's December 2023 decision [TTABlogged here] granting a counterclaim petition for cancellation of a registration for the mark I AM MORE THAN AN ATHLETE. GP GAME PLAN & Design (shown below) for "charitable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs." 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 likelihood of confusion with its registered mark. The sole issue for the Board was priority, and Applicant UNIP came in first. UNIP based its priority claim on a 2019 assignment of common law rights of the mark MORE THAN AN ATHLETE, rights that UNIP acquired after the opposition was commenced. Neither the Board nor the CAFC saw a problem with that. Game Plan, Inc. v. Uninterrupted IP, LLC, Appeal No. 024-1407 (December 10, 2025) [precedential].

Game Plan relied on the filing date of its underlying application (December 28, 2016) as its constructive first use date. It did not challenge the establishment of common law rights by UNIP's assignor in 2013, nor that UNIP continued to use the mark, but it did dispute the validity of the 2019 assignment. Game Plan claimed that the assignment violated the trademark antitrafficking rule of Section 1060(a)(1) of the Trademark Act for two reasons: first, it was an assignment in gross; and second, it constituted an improper assignment of an intent-to-use application. The CAFC disagreed.

Substantial evidence supported the Board finding that the 2019 assignment satisfied the requirement that goodwill be transferred. The assignment expressly defined the purchased assets as trademarks "together with the goodwill of the business associated therewith." Furthermore, UNIP's use of the mark was substantially similar to the assignor's use, sharing a common purpose and audience. And UNIP retained the individual assignor as a consultant. Thus there was a "continuity of goodwill." And so, the 2019 Assignment was not an assignment in gross.

Nor did the assignment improperly transfer UNKP's intent-to-use applications. Section 1060 restricts the assignment of intent-to-use applications before an amendment to allege use or a verified statement of use is filed. However, here "UNIP did not assign its pending intent-to-use applications. Rather, it received an assignment of pr-existing common law rights to an already-used mark." (emphasis in original).

Game Plan also argued that the timing of the 2019 Assignment violated 37 C.F.R. § 2.133(a). The CAFC again disagreed. Section 2.133(a) governs amendments to trademark applications or registrations during a TTAB proceeding. Game Plan contended that the 2019 Assignment should be treated as a substantive amendment to UNIP's intent-to-use applications and therefore it was prohibited because the assignment occurred after Game Plan filed its Notice of Opposition. However, Game Plan cited no authority supporting its claim that the acquisition of common law trademark rights constitutes an "amend[ment] in substance” within the meaning of § 2.133(a)."

In any case, the Board's ruling on priority was not based on UNIP's intent-to-use applications, but on its ownership of common law rights pre-dating Game Plan's priority date.

Finally, Game Plan feebly argued that the Board had failed to consider certain evidence relevant to the assignment issue. Game Plan conceded that it did not submit any evidence during its trial period. Instead, it attempted to rely on documents submitted with a motion of summary judgment that it had filed. That was improper, and the Board did not abuse its discretion by declining to consider that summary judgment evidence.

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TTABlogger comment: Hat Tip to Howard Shire, the LeBron James of trademark law.

Text Copyright John L. Welch 2025.