Priority Through Assignment: Federal Circuit Validates Mid-Opposition Acquisition Of Common Law Trademark Rights

On December 10, the Federal Circuit affirmed the Trademark Trial and Appeal Board ("TTAB")'s decision to cancel Game Plan, Inc. ("Game Plan")'s registered trademark and dismiss its opposition to Uninterrupted IP, LLC ("UNIP")'s pending applications. The dispute centered on whether a party can acquire priority over a registered mark by purchasing common law trademark rights during an opposition proceeding.

Game Plan, a non-profit assisting student athletes, applied to register the mark "I AM MORE THAN AN ATHLETE. GP GAME PLAN" on December 28, 2016, for charitable fundraising services. The U.S. Patent and Trademark Office registered the mark in June of 2018. Meanwhile, in March 2018, UNIP, a media company for athletes, filed six intent-to-use applications for marks containing "I AM MORE THAN AN ATHLETE" and "MORE THAN AN ATHLETE" for clothing and entertainment services. Game Plan initiated an opposition proceeding to UNIP's applications in November 2018; in response, UNIP counterclaimed to cancel Game Plan's registration. Critically, after Game Plan initiated the opposition proceeding, UNIP purchased common law rights to the mark "MORE THAN AN ATHLETE" in February 2019 from More Than an Athlete, Inc., who had used the mark for clothing and community events since at least 2012. The TTAB found that the UNIP had acquired valid common law rights to use the mark that predated Game Plan's registration and canceled Game Plan's registration.

On appeal to the Federal Circuit, Game Plan argued the assignment violated the trademark antitrafficking rule under 15 U.S.C. § 1060(a)(1) because it was 1) an assignment in gross, and 2) an improper assignment of an intent-to-use application. Game Plan also argued that the assignment violated 37 C.F.R. § 2.133(a), which restricts substantive amendments to applications during opposition proceedings.

The Federal Circuit rejected Game Plan's arguments and affirmed the TTAB's ruling. First, substantial evidence supported the TTAB's conclusion that the assignment was not an assignment in gross because it expressly transferred both the mark and "all of the goodwill of the business related to" the mark. Furthermore, UNIP's use was substantially similar to the prior owner's use (both sold clothing to promote athlete well-being), and UNIP retained a More Than an Athlete employee as a consultant. Second, the court explained that § 1060(a)(1) only restricts assignment of intent-to-use applications before use begins, not assignment of preexisting common law rights to already-used marks. Third, the court held that § 2.133(a) governs amendments to pending applications, not independent acquisition of common law rights. Since the TTAB based its priority determination on UNIP's acquired common law rights, which independently predated Game Plan's filing, the assignment did not violate § 2.133(a).

This decision confirms several key principles. Federal registration provides no shield if an opponent acquires earlier common law rights through a valid assignment. Additionally, assignments of common law trademark rights during an opposition proceeding are permissible if they include goodwill and maintain continuity of use.

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