Federal Circuit Affirms Cancellation of Registration Based on Priority of Common Law Rights

In Game Plan, Inc. v. Uninterrupted IP, LLC, No. 2024-1407 (Fed. Cir. Dec. 10, 2025), the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB), cancellation of Game Plan’s registration for the stylized mark “I AM MORE THAN AN ATHLETE. GP GAME PLAN.” After Game Plan registered its mark in 2018, Uninterrupted IP, LLC (“UNIP”) filed applications in 2018 for the mark “MORE THAN AN ATHLETE,” and subsequently acquired common law rights to the mark in 2019. The assignment of common law rights occurred during the underlying TTAB litigation between the parties. The TTAB held that UNIP’s assigned common law rights had priority and cancelled Game Plan’s registration.

On appeal, Game Plan argued the assignment violated trademark antitrafficking rules and procedural regulations. The Federal Circuit disagreed, explaining that the assignment was not an “assignment in gross” because it expressly transferred both the mark and the associated goodwill, as required by 15 U.S.C. § 1060(a)(1). The court found substantial evidence that UNIP’s use of the mark was substantially similar to the prior owner’s use, and that continuity of goodwill was maintained.

The Federal Circuit held that the timing of the assignment—during litigation—did not violate trademark law, as motives for assignment during litigation are not dispositive and such transfers are permissible when accompanied by goodwill. Additionally, the court clarified that Section 1060(a)(1) does not restrict the assignment of preexisting common law rights. Accordingly, the Federal Circuit agreed with the Board’s priority determination based on UNIP’s assigned common law rights.