UNITED STATES: Federal Circuit Upholds Common Law Priority via Assignment

In a precedential decision notable for its guidance on assignments and evidentiary issues in Game Plan, Inc. v. Uninterrupted IP, LLC, 160 F.4th 1377 (Fed. Cir. 2025), the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) cancellation of Game Plan, Inc.’s registration and the dismissal of its opposition to Uninterrupted’s six intent-to-use (ITU) applications.

Decided on December 10, 2025, the court held that (1) Uninterrupted established priority through an assignment of common law rights to the mark MORE THAN AN ATHLETE, an assignment that occurred after the opposition began; and (2) the TTAB properly excluded evidence not introduced at trial.

Game Plan, Inc. owned a registration for the following mark for use in connection with charitable fundraising services by means of selling T-shirts:

Uninterrupted filed six ITU applications for the following mark for use in connection with clothing and entertainment services:

Game Plan, Inc. opposed Uninterrupted’s applications, and Uninterrupted counterclaimed to cancel Game Plan, Inc.’s registration, arguing that Uninterrupted had priority through common law rights acquired from DeAndra Alex and her company More Than an Athlete, Inc. The TTAB found, and the Federal Circuit agreed, that Uninterrupted validly acquired the mark MORE THAN AN ATHLETE and its associated goodwill.

The court rejected arguments that the assignment was an impermissible assignment in gross or barred by the anti-trafficking rule in 15 U.S.C. Section 1060(a)(1). The assignment expressly transferred the mark “together with the goodwill,” and Uninterrupted’s use of the mark was substantially similar to Ms. Alex’s use.

Further, Section 1060(a)(1) restricts assignment of ITU applications before use is shown, but does not bar assignment of common law rights to a mark in use. The court also declined to rely on 37 C.F.R. Section 2.133(a), which forbids amendments to trademark applications during opposition proceedings. The TTAB’s priority ruling rested on common law rights independent of the pending applications.

The decision underscores the TTAB’s evidentiary rules: documents attached to pleadings and briefs are not of record unless introduced during trial. Thus, the TTAB did not abuse its discretion in excluding Game Plan, Inc.’s materials not entered into the trial record, which led to the dismissal of Game Plan, Inc.’s opposition.

This ruling reinforces that well-documented assignments with goodwill can confer priority even mid-proceeding, while highlighting that preservation of continuity in use and marketplace goodwill remains critical. It also serves as a cautionary reminder: strict compliance with TTAB trial procedures is essential to avoid forfeiture of substantive claims.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA, except where it has taken an official position.

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