Just when you think you’ve seen it all in trademark disputes, a story comes along and slaps you across the face with its silliness. Quite often, I find myself writing in support of small groups staving off trademark bullying by big corporate entities. This has far less to do with any hostility to big business than it does with the fact that trademark bullying is a tactic more commonly employed by big business than small business or individuals. But that isn’t always the case and I am certainly not above galloping to the rescue of a huge corporation with so much cash in its coffers that it would make Scrooge McDuck would blush.
For more than half a decade, sports apparel giant Adidas has been trying to trademark “Adizero” as a brand in the United States. It has been unable to do so solely because a small church based in Chicago has a trademark on the phrase “Add a zero” for clothing, and it appears that enough people think this is enough of a problem to hold up the trademark application.
Since 2009, the German sportswear giant has been attempting to federally register its “Adizero” mark but has been unable to due to existing trademarks held by the Chicago-based church, including one that extends to clothing, “namely, shirts, and caps.” Initially, the U.S. Patent and Trademark Office (“USPTO”) refused adidas’ trademark application because of its similarity to the church’s own “Add a Zero” trademarks – the first of which was registered in 2006. According to the USPTO, consumers were likely to be confused due to the similarity of the two parties’ trademarks.
On its face, this concern seems to be quite silly. For starters, one of these marks is a phrase in plain English, while the other is a fanciful portmanteau of sorts that seems to be made up of whole cloth. I’m not even sure the pronunciation for both marks is the same if spoken aloud, but certainly anyone seeing image branding of both side by side would not be rendered dumbstruck in confusion. When one adds to this that one of these entities is a famous brand likely to have its three-striped logo plastered all over an Adizero sportswear, while the other is a confessing Christian organization, this all begins to sound silly.
For its part, Adidas filed a motion with the USPTO in an appeal to have the church’s marks cancelled entirely, arguing both that the church’s marks don’t really act as any kind of source indentifier and that the church isn’t actually using the marks consistently in commerce. The USPTO’s Trademark Trial and Appeal Board agreed and cancelled the marks, noting that the church’s interstate commerce had amounted entirely to it selling two hats to somebody in Wisconsin. It was on the use in commerce question alone, it’s worth noting, that the TTAB made this decision.
The church actually appealed this ruling, saying that the meager duo of hat-sales did represent use in commerce… and the Federal Circuit agreed.
Judge Kara Farnandez Stoll stated on Monday that the Lanham Act’s definition of “use in commerce” includes any activity that Congress could regulate under the Commerce Clause. Sale of clothing to an out-of-state buyer “falls comfortably within” that definition, Stoll wrote in the decision joined by Judges Jimmie Reyna and Todd Hughes.
The Federal Circuit refused to require a specific number of transactions to meet the “use in commerce” standard. To the extent that the TTAB’s own decisions may conflict with that rule, they are expressly overturned, the court held. The Federal Circuit sent the case back to the TTAB for consideration of other arguments raised by adidas.
Here’s hoping that the TTAB finds in favor of Adidas on the other arguments. Meanwhile, apparently two sales qualifies for use in commerce for trademark purposes. Quite a standard we’re setting.