Adidas Faces Loss in Trademark Dispute with Church
In a unique trademark dispute, sports giant adidas finds itself at odds with the Christian Faith and Fellowship Church. The case revolves around the church's trademark for its merchandise, which includes shirts and caps, remarkably similar to those sold by adidas.
The church's trademark woes began when it sold two hats using its trademark. However, the USPTO's Trademark Trial and Appeal Board (TTAB) cancelled the church's trademark for non-use, as the sale was considered too small. This decision was based on the common grounds for trademark cancellation due to non-use, which centre on failure to use the trademark in the ordinary course of trade.
The Federal trademark law requires that a trademark be used in interstate commerce to be registered. This law does not recognise a de minimis exception, meaning that even small sales should count as "use in commerce." In this case, the TTAB deemed the church's sale insufficient to meet this requirement.
However, the church's victory is not final yet. The U.S. Court of Appeals for the Federal Circuit has sent the case back to the TTAB for consideration of other arguments raised by adidas.
This is not the first time adidas has encountered issues with trademark registration. In 2009, the company tried to register a federal trademark "Adizero," but the application was denied due to a similar trademark registered by the Christian Faith and Fellowship Church.
Adidas offered $5,000 to the church to give up its trademark, but the church felt the amount was too small. The court, however, has blocked adidas from registering a trademark that sounds confusingly similar to the church's registered trademark. The Federal Circuit has ruled that even a small sale should count as "use in commerce" because there is no de minimis exception in the Lanham Act.
Meanwhile, in a separate but related legal battle, Russia's state-owned company, Sojuzplodoimport (Союзплодоимпорт), has won a court case in the Netherlands over the Stoli and Stolichnaya trademarks in Belgium, the Netherlands, and Luxembourg. The opposing party in this case is the SPI Group (Spirits International), marking a significant victory for Russia in a 15-year legal battle to reclaim the Stoli trademark.
These cases underscore the importance of the "use in commerce" requirement for trademark registration and the potential consequences of failing to meet this requirement.
[1] Source: https://www.uspto.gov/trademarks-getting-started/trademark-basics/use-trademark-commerce
- Despite the unique trademark dispute with adidas over merchandise remarkably similar to theirs, the Christian Faith and Fellowship Church faced a setback when the USPTO's Trademark Trial and Appeal Board cancelled their trademark due to insufficient use in commerce, as per the Federal trademark law.
- In the ongoing legal battle between adidas and the Christian Faith and Fellowship Church, the Federal Circuit has ruled that even a small sale should count as "use in commerce," rejecting the de minimis exception often applied in such cases, in accordance with the Lanham Act.
