Trademark Dispute: Church Wins Against Adidas
Last week, the U.S. Court of Appeals for the Federal Circuit overturned a decision by the USPTO's Trademark Trial and Appeal Board (TTAB) to cancel the trademark "Add a Zero" of the Christian Faith and Fellowship Church, located in Zion, Illinois, near the Illinois-Wisconsin border.
The TTAB had cancelled the church's trademark for non-use, arguing that the sale of only two hats, one to a parishioner who lived within five miles of the church, was not considered "use in commerce." However, the Federal Circuit ruled that there is no de minimis exception in the Lanham Act that defines the "use in commerce" requirement, and even a small sale should count as "use in commerce."
The Christian Faith and Fellowship Church's trademark "Add a Zero" was registered for merchandise such as shirts and caps. In 2009, Adidas tried to register a federal trademark "Adizero" but was denied due to the similarity with the church's trademark.
The case in question is the trademark dispute between Adidas and the Christian Faith and Fellowship Church over the trademark "Add a Zero." Adidas had offered $5,000 to the church to give up its trademark, but the church felt the amount was too small.
Understanding the nuances of trademark law is crucial for businesses aiming to protect their intellectual property across borders. Trademark protects the words, phrases, and logos used to identify the source of goods or services. The purpose of trademark cancellation based on non-use in interstate commerce is to maintain fairness in the trademark system by ensuring marks are actively used to identify the origin of goods/services and are not merely held to block others unfairly from using them.
To succeed in a non-use based cancellation petition, the challenger must show that the trademark registrant has not used the mark in commerce on or in connection with the registered goods or services for at least three consecutive years, which strongly implies abandonment. The registrant must also lack a bona fide intent to resume use, and the non-use must cause damages or a legal injury to the petitioner.
The Federal Circuit has sent the case back to the TTAB for consideration of other arguments raised by Adidas. Meanwhile, the Christian Faith and Fellowship Church's "Add a Zero" trademark remains in effect.
Elsewhere, Sojuzplodoimport has won a case in a Dutch court, ruling them the rightful owner of the Stoli and Stolichnaya trademarks in Belgium, the Netherlands, and Luxembourg. The opposing party in the Stoli trademark case is the SPI Group.
Patent protects inventions, while copyright protects literary and artistic works of authorship. Both are essential tools for businesses to protect their intellectual property and maintain a competitive edge in the market.
[1] Trademark Trial and Appeal Board (TTAB) Manual of Procedure, Part 1207.01(b) [3] Lanham Act, 15 U.S.C. § 1064
- The Christian Faith and Fellowship Church might seek legal services to further protect its "Add a Zero" trademark, especially in the event of any potential interventions from finance-driven businesses like Adidas, who may find value in the trademark's merchandise offerings, such as shirts and caps.
- In a separate case, Sojuzplodoimport, the rightful owner of the Stoli and Stolichnaya trademarks, secured a victory in a Dutch court, highlighting the importance of understanding the nuances of trademark law for businesses aiming to protect their intellectual property across borders.
