“A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used.” 15 U.S.C. § 1060(a)(1); see also Gaia Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774, 777 (Fed. Cir. 1996) (“a trademark cannot be validly assigned unless accompanied by its goodwill garnered in the marketplace”), amended on reh'g in part, 104 F.3d 1296 (Fed. Cir. 1996). The sale of a trademark divorced from its goodwill is an improper assignment in gross.  See Visa, U.S.A., Inc. v. Birmingham Tr. Nat'l Bank, 696 F.2d 1371, 1375 (Fed. Cir. 1982). To avoid an improper assignment in gross, a trademark assignment typically includes express language that the trademark assets are being transferred “together with the goodwill of the business associated therewith.” 

The Federal Circuit recently upheld that an assignment of common law rights established that the assignee had priority in an opposition over the “I AM MORE THAN AN ATHLETE” mark in Game Plan, Inc. v. Uninterrupted IP, LLC, No. 24-1407, __ F.4th __ (Fed. Cir. Dec. 10, 2025). 

Based on its “I AM MORE THAN AN ATHLETE. GP GAME PLAN” mark for “[c]haritable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs,” Game Plan filed its opposition to UNIP's intent-to-use applications for the “I AM MORE THAN AN ATHLETE” mark  for clothing and entertainment services, on April 8, 2019. Afterwards, on February 22, 2019, UNIP acquired common law rights to the MORE THAN AN ATHLETE mark through an asset purchase agreement (the “2019 Assignment”) from DeAndra Alex and her company, More Than an Athlete, Inc. (“MTAA”), which had used the MORE THAN AN ATHLETE mark since at least 2012 in connection with clothing and community events. In particular, UNIP acquired the common law rights in the mark MORE THAN AN ATHLETE and “all of the goodwill of the business related to” the mark. While UNIP did not continue use of the mark for community event services, it did for clothing.

. . . UNIP's use of the mark was substantially similar to Ms. Alex's use, and UNIP and MTAA shared a common purpose and audience. Final Decision at *8. This finding was supported by evidence that both companies used the mark in connection with the sale of t-shirts and similar clothing as “a part of a larger effort that relates to the well-being of athletes.” Id.; see also J.A. 129–33, 256–58.  The Board further noted that UNIP retained Ms. Alex as a consultant.  Final Decision at *7. The Board found that this evidence demonstrated continuity of goodwill associated with the acquired mark. Id. at *8. We agree that the 2019 Assignment does not constitute an assignment in gross.

The Federal Circuit affirmed UNIP's priority claim based on its later-acquired common law rights in the MORE THAN AN ATHLETE mark during litigation. Indeed, “the motivation for a sale is irrelevant and senior user status may be properly achieved by assignment in anticipation or in the midst of litigation.” Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339, 1348 n.10 (E.D.N.Y. 1994).