from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in No. 92053314.
Richard W. Young, Quarles & Brady, LLP, Chicago, IL,
argued for appellant.
Zaccaria, Notaro, Michalos & Zaccaria P.C., Orangeburg,
NY, argued for appellee. Also represented by Bradley S.
Corsello, Angelo Notaro.
Reyna, Hughes, and Stoll, Circuit Judges.
Faith Fellowship Church appeals a final judgment of the
Trademark Trial and Appeal Board that, in response to a
petition filed by adidas AG, cancelled its trademarks for
failing to use the marks in commerce before registering them.
The Board held that the Church's documented sale of two
marked hats to an out-of-state resident were de
minimis and therefore did not constitute use of the
marks in commerce under the Lan-ham Act. Because the Lanham
Act defines commerce as all activity regulable by Congress,
and because the Church's sale to an out-of-state resident
fell within Congress's power to regulate under the
Commerce Clause, we reverse the Board's cancellation of
the Church's marks on this basis and remand for further
Faith Fellowship Church is located in Zion, Illinois, within
five miles of the Illinois-Wisconsin border. Being located so
close to the border, the Church's parishioners include
both Illinois and Wisconsin residents. In January 2005, the
Church began selling apparel, both caps and shirts,
emblazoned with the phrase "ADD A ZERO." The Church
sold the "ADD A ZERO"-marked apparel as part of a
fundraising campaign to pay off the debt on its church
facility and the associated 40-acre tract of land.
Illinois-based Icon Industries supplied the Church with the
"ADD A ZERO"-marked apparel, which the Church sold
in its bookstore.
Church sought a federal trademark for the "ADD A
ZERO" mark at the U.S. Patent and Trademark Office in
March 2005. The Church filed two clothing-based trademark
applications, one for use of "ADD A ZERO" in
standard characters and another for a stylized design of the
phrase. The Church's applications relied on actual use of
the marks in commerce, not intent to use the marks in
commerce. The Office granted the Church's applications
and registered the marks as U.S. Registration Nos. 3, 173,
207 and 3, 173, 208.
2009, adidas AG ("Adidas") sought a clothing
trademark for the phrase "ADIZERO, " but the Office
refused the application for likelihood of confusion with the
Church's "ADD A ZERO" marks. Adidas brought an
action before the Trademark Trial and Appeal Board to cancel
the Church's marks, arguing several grounds for
cancellation: (1) the Church's failure to use the marks
in commerce before registration; (2) the marks' failure
to function as trademarks; and (3) the Church's
abandonment of the marks for nonuse. The Board agreed with
Adidas's failure-to-use argument and cancelled the
Church's marks, without addressing Adidas's alternate
cancellation grounds. The Board considered the Church's
proffered evidence-over Adidas's hearsay and
authentication objections-of a cancelled check for the sale
of two "ADD A ZERO"-marked hats for $38.34 in
February 2005, before the Church applied for its marks. The
Church had kept the check in its records and cross-referenced
it with a sales register it maintained for its bookstore. The
check's drawer was Charlotte Howard, who had a Wisconsin
home address pre-printed on her check.
Board disagreed with the Church that the sale to Ms. Howard
evidenced the requisite "use in commerce" under the
Lanham Act. The Board concluded:
[T]he sale of two ADD A ZERO caps at a minimal cost within
the state of Illinois to Ms. Howard, who resides outside the
state, does not affect commerce that Congress can regulate
such that the transaction would constitute use in commerce
for purposes of registration.
. . . This sale is de minimis and, under the
circumstances shown here, is insufficient to show use that
affects interstate commerce.
adidas AG v. Christian Faith Fellowship Church,
Cancellation No. 92053314, 2015 WL 5882313, at *7 (T.T.A.B.
Sept. 14, 2015) (Board ...