Leech Tishman

The Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office granted a request by Adidas AG to cancel a Chicagoland church’s registration of a trademarks for a slogan the church said was inspired by God.

Adidas had sought since 2009 to register the mark “Adizero” for a super-lightweight line of shoes and apparel — but its use was rejected based on the church’s earlier registration.

The Respondent, the Christian Faith Fellowship Church, owned trademarks for the mark ADD A ZERO for “clothing, namely, shirts and caps.”

The church’s website said that the slogan was a “prophetic word spoken to the congregation in the early 2000s.”

The mark was reportedly used to encourage congregants to increase their weekly donations to the church by “adding a zero” to the total.

Nonuse

The church filed its trademark registration in 2005 based on “use in commerce.”

The grounds alleged by Adidas for cancellation were:

(1) nonuse prior to the filing dates of Respondent’s use-based applications, rendering the registrations void ab initio;

(2) abandonment of Respondent’s registrations based on at least three consecutive years of nonuse with intent not to resume such use; and

(3) failure of the marks to function as trademarks because ADD A ZERO is simply an informational slogan.

Out of State

The TTAB ruled that the church’s sales of items with the slogan at its bookstore did not meet the Lanham Act’s requirements for the mark being “used in commerce,” even if some sales were to people who lived out of state:

To the extent Respondent suggests that simply offering its Add A Zero caps and shirts in the bookstore to parishioners who reside out of state prior to the filing dates of the applications … constitute use of the marks in commerce, Respondent cites no support for this proposition, and we are not aware of any…

Specifically, “the sale in Illinois of two caps to a Wisconsin resident” was the only evidence of a sale that could arguably affect interstate commerce, and the TTAB found this was insufficient to show use of the mark in interstate commerce.

The case is adidas AG v. Christian Faith Fellowship Church.

Takeaway

This case drives home the important of an actual interstate “use in commerce” for a trademark that is being registered on a “use” (rather than “intent to use”) basis.

About Us

Leech Tishman’s Intellectual Property Group is based in Pasadena, California with a team of highly-regarded legal professionals with prosecution and litigation expertise in the fields of patent, trademark, copyright, and trade secrets.

Please also visit us online for more information about our services.

Photo Attribution: “AdidasSuperstarII” by ClonedPickle – Own work by the original uploader. Licensed under Public Domain via Commons.

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