Readers of this blog will recall that in order for the U.S. Patent and Trademark Office (USPTO) to issue a registration for a trademark, that mark has to have been used in interstate commerce. What does that mean? A recent case helped clarify the matter.
The case is Christian Faith Fellowship Church v. Adidas AG in the U.S. Court of Appeals for the Federal Circuit.
Back in 2006, the Church obtained two USPTO registrations for the trademark ADD A ZERO (here’s the second registration) for various types of apparel. In 2009, Adidas applied to register the mark ADIZERO, also for apparel. Adidas’ application was rejected on the grounds that it was likely to be confused with the Church’s prior registered mark.
Adidas went on the offensive and filed a petition before the Trademark Trial and Appeal Board (TTAB) to cancel the ADD A ZERO registrations. One of Adidas’ grounds for cancellation was the Church’s alleged lack of use in commerce.
Need a refresher on trademarks? Check out my podcast on what is a trademark
The reason this whole “in commerce” business matters is that the Federal government’s ability to issue trademarks is, in part, based on their Constitutional power to regulate interstate commerce (under what’s called the “Commerce Clause”). So, this case, lack of use of the mark ADD A ZERO by the Church in (interstate) commerce would be sufficient to destroy the basis on which a trademark is registered.
The Illinois-based Church responded by providing a receipt for the sale of two ADD A ZERO hats to a customer in Wisconsin. The receipt predated the Church’s trademark application. The TTAB held that the sale of two hats to a customer in another state was…
…de minimis and, under the circumstances shown here, …insufficient to show use that affects interstate commerce.
The Church appealed this decision to the Federal Circuit, which held that…
…it is clear in light of the foregoing precedent that the Church’s sale of two “ADD A ZERO”-marked hats to an out-of-state resident is regulable by Congress under the Commerce Clause and, therefore, constitutes “use in commerce” under the Lanham Act [the Federal law that governs trademarks].
Different circuits within the Federal court system often disagree on various points of law, so this ruling may not apply universally. But it does point to the direction that courts are likely to take these types of cases. Under most circumstances, even a sale of one or two inexpensive items across state lines will be sufficient to satisfy the USPTO’s “in commerce” requirement for trademark registrations.
