Friday, December 02, 2016

TTAB Test: Is "LUCKY SUSHI BAR" Confusable With "LUCKY BAR" for Restaurant Services?

Try your luck on this Section 2(d) bar. The USPTO refused registration of the mark LUCKY SUSHI BAR for bar and restaurant services [SUSHI BAR disclaimed], finding a likelihood of confusion with the registered mark LUCKY BAR for the same services [BAR disclaimed]. Applicant argued that LUCKY is a weak formative, pointing to more than two dozen third-party, use-based registration for marks containing the word LUCKY for restaurant or bar services, or both. How do you think this came out? In re LSB Group LLC, Serial No. 86510189 (November 30, 2016) [not precedential].

Applicant relied on 28 third-party registrations for LUCKY-containing marks, including LUCKY BEAVER BAR & BURGER, LUCKY'S LOUNGE [in Boston, near WGS], and LUCKY NOODLES. The Board pointed out, however, that third-party registrations are not evidence that the marks are in use, but they can show that a mark or a portion thereof has a descriptive or suggestive meaning, and is therefore weak. "An applicant may come closer to a weak mark without causing likelihood of confusion."

Applicant argued that in this context, "lucky" may have the conventional connotation of "good luck," or may bring to mind the slang expression "get lucky." The Board agreed that this number of registrations lends support to the argument that "lucky" is at least suggestive here. [Of what? - ed.]. However, most of the referenced marks are distinguishable from the marks involved here because many place "lucky" within a broader expression having a meaning different from "lucky" alone: e.g., "lucky strike," "lucky horseshoe," "lucky clover," or "lucky streak." Others use the possessive "Lucky's," suggesting an individual. Still others add non-generic/non-descriptive wording, whereas the two marks here consist of only the word "lucky" and generic terms.

However, because there was no evidence that these or any other "lucky" marks are in use, or that consumers are aware of the marks, the Board could not conclude that "lucky" is diluted and commercially weak. [In Juice Generation and Jack Wolfskin, there was proof both of third-party registrations and of considerable third-party use].

Even assuming that "lucky" is conceptually weak, the Board observed that "likelihood of confusion is to be avoided, as much between 'weak' marks as between 'strong' marks."

The Board found, not surprisingly, that the word LUCKY dominates both marks. It found the marks to be similar in appearance and pronunciation, particularly in view of the identity in services. As to commercial impression, the Board agreed to some extent with applicant that SUSHI BAR creates a different impression than BAR alone. However, both the application and cited registration are broad enough to cover more specialized types of restaurants. Evidence showed the some establishments provide sushi bars and bar services.

Finally, the Board found no evidence to support applicant's assertion that sophisticated purchasers are involved, and the argument regarding lack of actual confusion was of little or no value in this ex parte context, where the registrant has no opportunity to be heard.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Was this a WYHA?

Text Copyright John L. Welch 2016.

Thursday, December 01, 2016

TTAB Affirms Refusal of ULTRA TRIMMER for Illegal Drug (Marijuana) Paraphernalia

The Board affirmed a refusal to register the mark ULTRA TRIMMER for "agricultural machines, namely, a trimming machine for trimming leaves, plants, flowers and buds" on the ground that the goods comprise illegal drug paraphernalia under the federal Controlled Substances Act (CSA). In re Ultra Trimmer, L.L.C., Serial No. 86479070 (November 29, 2016) [not precedential].

The Board has consistently held that use of a mark must be "lawful" to qualify for federal registration. In other words, "any goods ... for which the mark is used must not be illegal under federal law." In re JJ206, LLC, quoting In re Brown.

Although applicant's identification of goods does not reveal a per se violation of the CSA, extrinsic evidence may be used to show such violation. Examining Attorney Lindsey Ben relied on applicant's specimen of use (above) and on its website (here) to show that applicant's machine is illegal drug paraphernalia under Section 863 of the CSA, 21 USC Section 863. Applicant did not dispute that its goods are used to trim marijuana buds.

"Drug paraphernalia," as defined in the CSA, include equipment for processing or preparing a controlled substance, the possession of which is illegal under that Act. Applicant's website and promotional materials demonstrate that its machine is intended and design for use in proceeding of marijuana.

Applicant contended that "use in commerce" under Section 1 of the Lanham Act does not require that the use be lawful under federal law. That argument, however, was rejected nearly 50 years ago in In re Stellar Int'l, Inc., wherein the Board ruled that "commerce" under the Lanham Act must necessarily refer to "lawful commerce." "To hold otherwise would be to place the Patent Office in the anomalous position of accepting as a basis for registration a shipment in commerce which is unlawful under a statute specifically controlling the flow of such goods in commerce."

Next, applicant maintained that the sale of its machines is exempted from the CSA because such sales are authorized by state law, since 45 states and the District of Columbia permit the sale of marijuana and accessories under various scenarios. Applicant also pointed to the Department of Justice's "Cole Memo," which recognizes the lawfulness of these frameworks.

The Board, however, found no evidence that applicant has received a license or other authorization from any local, state, or federal authority allowing it to manufacture, possess, or distribute drug paraphernalia that would otherwise be illegal under the CSA. In short, it has not shown that is exempt from CSA illegality.

The Board addressed the Cole Memo in JJ206, finding that such policy statements lack the force of law. The Cole Memo is only a guide to the exercise of investigative and prosecutorial discretion, and does not provide a defense to violation of federal law.

Finally, applicant argued that the refusal to register constitutes a Constitutional violation because the requirement for establishing lawful use is not evenly applied. It pointed to third-party registrations covering goods that purportedly violated the CSA. However, applicant provided no evidence that the products (pharmaceuticals) violated the CSA when the registrations were issued. Moreover, even if the USPTO allowed a mark similar to applicant's to be registered, that does not give applicant an equal protection right to a registration. Each application must be examined on its own merits, and decisions regarding other marks do not bind the Board. In sum, there was no showing that the USPTO acted pursuant to some arbitrary or impermissible standard.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: As the marijuana industry heats up, the Board cracks down. I wonder what will happen to the Cole Memo under the incoming administration?

Text Copyright John L. Welch 2016.

Wednesday, November 30, 2016

TTAB Posts December 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled four (4) oral hearings for the month of December 2016. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

December 7, 2016 - 11 AM: Executive Coach Builders, Inc. v. SPV Coach Company, Inc., Opposition No. 91212312 [Opposition to ARMBRUSTER STAGEWAY for "vehicles, namely, customized limousines,"on the ground of likely confusion with the allegedly prior mark ARMBRUSTER/STAGEWAY  for limousines].

December 8, 2016 - 11 AM: Briggs & Stratton Corporation and Kohler Co. v. Honda Giken Kogyo Kabushiki Kaisha (Honda Motor Co., Ltd.), Opposition No. 91200832 [Opposition to registration of the product configuration shown below for "engines for use in construction, maintenance and power equipment," on the grounds of functionality, genericness, lack of acquired distinctiveness, and abandonment].

December 8, 2016 - 2 PM: Beau L Tardy v. Wild Brain Entertainment, Inc., Opposition No. 91205896 [Opposition to registration of DIZZY for video game software, video and audit recordings, on the ground of lack of bona fide intent].

December 13, 2016 - 2 PM: In re Nomi Network, Inc., Serial No. 85677459 [Section 2(d) refusal of NOMI FOR A BETTER LIFE for "On-line retail store services featuring clothing items, excluding footwear, that are specifically identified as made by survivors of sex slavery and human trafficking and sold to consumers who wish to support victims of sex slavery and human trafficking," in view of the registered mark NOMI for "footwear"].

Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2016.

Tuesday, November 29, 2016

Precedential No. 33: Divided TTAB Panel Affirms 2(e)(4) Refusal of Rare Surname ADLON

A divided TTAB panel affirmed a Section 2(e)(4) refusal of the mark ADLON for various goods and services, including "hospitality industry services," finding it to be primarily merely a surname.  Although ADLON is a rare surname, the panel majority observed that it has no meaning or significance other than as a surname. Judge Quinn dissented, contending that ADLON is an extremently rare surname that consumers would perceive as a coined term having no meaning. In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, Serial No. 85831682 (November 23, 2016) [precedential].

Guess where?

The panel majority noted that practitioners and examining attorneys often interpret and apply the Benthin factors with "a rigidity that is not warranted." Examining Attorney N. Gretchen Ulrich submitted website evidence demonstrating that ADLON is, in fact, a surname. So called "negative dictionary" evidence [NB: a "negative dictionary is not one that is printed in white type on a black background - ed.] showed that ADLON has no recognized meaning, nor is it the name of a geographic location. Applicant admitted the word has no meaning in a foreign language.

The evidence indicated that there are approximately 75 individuals in the United States having the surname ADLON. One is an actress named Pamela Adlon, who has "achieved a substantial degree of public recognition for her performances in live-action television roles" and as a voice actress, most famously in "King of the Hill," for which she won an Emmy as the character Bobby Hill. [Never heard of her - ed.].  Evidence from the IMDb mentions several other entertainers and artists with the surname ADLON. [Never heard of them either - ed.]

Guess who?

Applicant argued that the "rareness" of the surname ADLON should be dispositive in this case, since prior cases involving fewer than 100 occurrences of a surname resulted in reversal of the surname refusal. The Board, however, pointed out that a "strictly numerical approach to a surname analysis has been squarely rejected." See In re Etablissmements Darty et Fils, 225 USPQ 652, 653 (Fed. Cir. 1985). The Board again observed that "even a rare surname is unregistrable if its primary significance to purchasers is a surname." In re Eximius Coffee, LLC, 102 USPQ2d 1276, 1281 (TTAB 2016).

Applicant contended that consumers would perceive the mark as indicating applicant or its Hotel Adlon, and the source of its goods and services. According to Wikipedia, the original Hotel Adlon was one of the famous hotels in Europe, and served as the social center of Berlin throughout the Nazi period. It was largely destroyed in 1945, but has been rebuilt and now operates as the Hotel Adlon Kempinski Berlin. The hotel has been the subject of several films and documentaries.

The  panel majority found this evidence to be problematical since the hotel was named ADLON because it was the surname of its founder, and was subsequently run by family members. Thus, according to the majority, the evidence shows ADLON "used in a context that suggests that the term is a surname." The panel majority found no "objective countervailing evidence" that would rebut the surname meaning of ADLON.

Examining the entire record to determine the primary significance of the term ADLON, we find that the Examining Attorney has demonstrated that ADLON is a surname that is in use in the United States, that the public has been exposed to and discussed ADLON as a surname, and that the term ADLON has no other “ordinary language meaning.” We further find that Applicant has failed to demonstrate that the term has another significance that is its primary significance as perceived by the public. We find, therefore, that ADLON is primarily merely a surname and that the refusal to register the mark must be affirmed.

Judge Quinn, in dissent, opined that the "extreme rareness of a surname may provide some insight into the perception of it by consumers." The legislative history of Section 2(e)(4) corroborates the materiality of surname rareness.

Here, the evidence revealed 75 persons with the surname ADLON. Social media evidence uncovered a mere 8 examples of ADLON as a surname. The evidence regarding media attention given to a single actress best known for her performance as the voice of an animated character falls short of proving that ADLON is primarily a merely a surname. The other individuals with the surname ADLON do not appear to enjoy any particular notoriety.

Moreover, there are no contextual clues that identify ADLON as a surname. In contrast, for example, in Darty, the term DARTY was used in a company name, Darty et Fils, that reveals its surname significance. In Eximius Coffee, the surname of those associated with applicant was ALDECOA and the product was promoted as a "premium family coffee."

Based on the record, I find that consumers would not think of the extremely rare surname ADLON primarily merely as a surname because they are highly unlikely to have encountered it as such, but rather would regard the term as being a coined term or unknown term with an unknown meaning.

With regard to the Hotel Adlon, Judge Quinn found it unlikely that consumers in the United States would know of a single hotel in Berlin, Germany [not Berlin, Connecticut - ed.], and less likely to know that Lorenzo Adler was the hotel's founder. In short, this portion of the record "plays a minimal role in the surname analysis."

In sum, Judge Quinn would reverse the refusal to register, giving the applicant the benefit of any doubt arising from the record evidence.

Read comments and post your comment here.

TTABlog comment: I agree with Judge Quinn. How about you?

This is the third precedential decision in the last two months in which the Board has followed a revised approach to Section 2(e)(4), putting aside the more mechanical view of Benthin and focusing more broadly on consumer perception. The result has been a raising of the bar.

Text Copyright John L. Welch 2016.

Monday, November 28, 2016

TTAB Test: Which of These Four Section 2(d) Refusals Were Reversed?

Supposedly one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods. In two of these four recent appeals, the Board reversed the refusals, finding no likelihood of confusion. Let's see how you do in figuring out which was which. [Answer will be found in first comment].

In re Lightning Strike Distributing, LLC, Serial No. 86855380 (November 16, 2016) [not precedential]. [Section 2(d) refusal of JED’S JERKY for "jerky" [JERKY disclaimed], in view of the registered mark JED'S for "barbecue sauce"].

In re Due South Brewing Co., Serial No. 86183992 (November 23, 2016) [not precedential]. [Section 2(d) refusal of DUE SOUTH BREWING CO. for "bar services" [BREWING CO. disclaimed], in view of the registered mark DUE SOUTH PIT COOKED BARBECUE & Design for "restaurant and catering services" [PIT COOKED BARBECUE disclaimed]].

In re Scram Software Pty Ltd., Serial No. 86658580 (November 23, 2016) [not precedential]. [Section 2(d) refusal of CLOUD SHERIFF for "Computer software for encrypting ... documents" and for "development, design, implementation, testing, analysis, and consulting services in the field of ... encryption" [CLOUD disclaimed], in view of the registered mark HISOFTWARE SECURITY SHERIFF for "Computer software, namely, downloadable software for use in ... encryption of documents," and for "hosting software for use in ... encryption of documents"[SECURITY disclaimed]].

In re Denver Beer Company, LLC, Serial No. 86515920 (November 23, 2016) [not precedential]. [Section 2(d) refusal of PRINCESS YUM YUM RASPBERRY ALE for "beer" [RASPBERRY ALE disclaimed], in view of the registered mark YUMYUM for "beer"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Wednesday, November 23, 2016

TTAB Test: Is THE SALAD STATION Merely Descriptive of Restaurant Services?

The USPTO refused registration of the mark THE SALAD STATION, in standard character and design forms, finding the term merely descriptive of restaurant services. Applicant appealed, asserting that the mark would describe only the salad bar within the restaurant, not the restaurant itself. Applicant also pointed to third-party registrations for restaurant marks containing the word "station." How do you think this came out? In re Salad Town, LLC, Serial Nos. 86414039 and 86414055 (November 21, 2016) [not precedential].

The Board pointed out that a mark is merely descriptive even if it describes only a single feature, function, or characteristic of the services. Examining Attorney Colleen Mulcrone submitted screenshots of thirteen websites demonstrating that the term "salad station" is commonly used to describe a feature of a restaurant. "Consumers are accustomed to seeing the term “salad station” used to describe a feature of a restaurant that provides a selection of various salad ingredients and toppings, allowing customers to construct their own salad, i.e., a salad bar."

Applicant's website refers to a "salad bar" as a feature of its restaurants. "Therefore, the wording 'The Salad Station' is merely descriptive of Applicant’s restaurant services because, at the very least, it
describes a significant feature of Applicant’s restaurant services, even if Applicant also offers soups, spuds and beverages in addition to a salad station."

Applicant argue that THE SALAD STATION is suggestive because "the consumer would see that THE SALAD STATION is actually the name of the restaurant itself. The consumer then needs to use a reasoning process to determine that THE SALAD STATION is actually a full-service restaurant that offers more than a salad bar." The Board, however, concluded the consumers would immediately understand that "salad station" refers to a feature of the restaurant.

Applicant submitted seven third-party registrations for marks containing the word STATION, for restaurant services or coffee bars. However, in three the term "coffee station" was disclaimed. As to the other four (including TACO STATION and CHIANTI STATION), there was no indication that the file record included the type of evidence provided here. Moreover, each case must be decided on its own factual record, and the Board is not bound by prior decisions involving different records.

The Board therefore affirmed the refusal of the standard character mark, and affirmed the disclaimer requirement for the design mark.

Read comments and post your comment here.

TTABlog comment: Well, what do you think?

Text Copyright John L. Welch 2016.

Tuesday, November 22, 2016

Noting Circuit Split, INTA Files Amicus Brief in Support of FLANAX Petition for Certiorari

The International Trademark Association (INTA) has filed an Amicus Brief (here) in support of the petition for writ of certiorari seeking Supreme Court review of the Fourth Circuit's FLANAX decision, Belmora LLC v Bayer Consumer Care AG, et al., 819 F.3d 697 (4th Cir. 2016) (4th Cir. 2016). The appellate court vacated the ruling of the U.S. District Court for the Eastern District of Virginia (here) dismissing Bayer's claims on the ground that it lacked standing, and it remanded the case to the district court for further proceedings.

According to the INTA brief:
The Court should grant Certiorari because this case presents a timely opportunity to provide clarity and guidance on an issue of great importance to trademark owners, namely: can the owner of a foreign trademark establish standing to pursue claims under Sections 14(3) or 43(a) of the Lanham Act against the owner of the same mark in the United States, and if so, under what circumstances may a foreign trademark owner establish such standing?

The INTA brief points out that the circuit courts of appeals have rendered inconsistent and conflicting decisions on the issue. The Ninth Circuit in Grupo Gigante held that a famous mark exception to the territoriality principle exists. However, the Federal Circuit (in Person's) and the Second Circuit (in Punchgini) have invoked the territoriality principle to reject claims by foreign trademark owners. The Fourth Circuit’s FLANAX decision represents a third approach to trademark territoriality in ruling that Lanham Act Sections 14(3) and 43(a) do not require that the plaintiff own a U.S. trademark as a precondition to asserting a claim. Instead, the Fourth Circuit, relying on Lexmark, focused on the defendant’s conduct, asking whether the defendant has caused injury to the plaintiff and ignoring the territoriality principle.

Read comments and post your comment here.

TTABlog comment: How do you think this will come out?

Text Copyright John L. Welch 2016.

Monday, November 21, 2016

LEFTY’S Restaurant Strikes Out In TTAB Section 2(d) Appeal

The Board affirmed a Section 2(d) refusal to register the mark LEFTY’S for “restaurant and bar services,” finding it likely to cause confusion with the identical mark registered for “bar and restaurant services.” Applicant Bovis Foods pointed to its use of the LEFTY’S mark for restaurant and bar services for “nearly 60 years” without confusion, and to its registrations for LEFTY O’DOUL’S for restaurant and bar services and for hot dogs, and mustard, and LEFTY's for non-alcoholic cocktail mixes, and energy drinks. The Board let those wild pitches go by. In re Bovis Foods, LLC., Serial No. 86286415 (November 18, 2016) [not precedential].

The Board pointed out that priority is not an issue in an ex parte appeal of a Section 2(d) refusal. Applicant could have petitioned to cancel the cited registration, or could have sought a concurrent use registration, but it did not do so.

Co-existence of the involved marks is relevant only if the mark were in use in the same channels of trade, and if there have been meaningful opportunities for confusion to occur.. Here, registrant’s restaurant is presumably in Maryland while applicant’s is in San Francisco. There was no evidence that customers have traveled from Maryland to San Francisco, or vice versa. [Have the Orioles never played the Giants? - ed.].

Even assuming Applicant’s restaurant is known to those who have not traveled to San Francisco or eaten there, due to its length of use for restaurant services and certain goods and its connection with the baseball player Lefty O’Doul, the fact that Applicant is not aware of actual confusion does not mean there has not been such confusion, nor does it foreclose the likelihood of confusion. The lack of evidence of actual confusion carries little weight in the ex parte context. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The issue before the Board is, of course, likelihood of confusion, not actual confusion. Moreover, the registrant has no opportunity to be heard on the issue of actual confusion in an ex parte appeal.

With regard to the crowded-field argument, “[e]ven if there were sufficient evidence to find the field of restaurants that incorporate the term LEFTY’S in their marks crowded, and that the use and registration of LEFTY’S for goods adds to the crowded field, there must be some distinguishing element in the applied-for and registered marks or the goods and services by which consumers may distinguish them. Here, everything is identical.”

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: As the saying goes, two Lefty's don't make a right. What's next? An application for a concurrent use registration?

Text Copyright John L. Welch 2016.

Thursday, November 17, 2016

TTAB Test: Are HOLAIRA and ALAIR Confusable for Lung-Related Medical Devices?

Boston Scientific opposed an application to register the mark HOLAIRA for "medical devices for treating obstructive lung diseases; medical apparatus and instruments for treating obstructive lung diseases," claiming a likelihood of confusion with the registered mark ALAIR for "medical therapeutic devices for use in the treatment of pulmonary diseases, namely, catheters, probes, generators, bronchoscopes, and electrodes." The goods are identical or overlapping, a factor that "weighs heavily" in favor of opposer. But what about the marks? How do you think this came out? Boston Scientific Corp. and Asthmatx, Inc. v. Holaira, Inc., Opposition No. 91215699 (October 6, 2016) [not precedential].

The Board asserted that "[t]he only difference between the marks is the initial syllable of each, and the addition of an “a” at the end of Applicant’s mark." [Those are pretty big differences, aren't they? - ed.]. It found that the marks have a "strong visual similarity." [Really? - ed.]

Although there is no correct pronunciation of a mark that is not a recognized word, the Board found that "consumers are likely to vocalize the words in a similar manner, given that the stressed, middle portion in each mark is identical." [So there is a correct pronunciation? - ed.].

Moreover, the marks evoke "highly similar connotations:" they suggest "a sense of one's 'breathing in all the air' or getting 'air to the whole lung.'" According to the Board, "[t]he word “all” (evoked by the 'al' of Opposers’ mark) and the word 'whole' (evoked by the letter string 'hol' in Applicant's mark) are established synonyms." And the Board concluded that we find that the marks create "similar overall commercial impressions when used on goods used to treat pulmonary or respiratory disease."

And so, balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do? I think this case was a lot closer than the Board made it seem. Maybe the Board got it wrong.

Text Copyright John L. Welch 2016.

Wednesday, November 16, 2016

CAFC Reverses TTAB: In-state Sale of Two Hats Constitutes Use of Mark in Commerce

The CAFC reversed the TTAB's decision in adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (September 14, 2014) [not precedential], ruling that the sale of two hats at the Church's bookstore to an out-of-state purchaser constituted use in commerce of applicant's mark ADD A ZERO. The Board had granted the petition of adidas AG for cancellation of two registrations owned by the Christian Faith Fellowship Church for the mark ADD A ZERO, in standard character and design form, for "clothing, namely shirts and caps," finding that these sales were de minimis and insufficient to show use that affects interstate. Christian Faith Fellowship Church v. adidas AG, Appeal No. 2016-1296 (Fed. Cir. November 14, 2016) [precedential].

Section 1(a) of the Lanham Act provides that "[t]he owner of a trademark used in commerce may request registration of its trademark." "Commerce" is defined as "all commerce which may lawfully be regulated by Congress." To register a mark based on use in commerce, "one must sell or transport goods bearing the mark such that the sale or transport would be subject to Congress’s power under the Commerce Clause, which includes its power to regulate interstate commerce."

In this case, the question was whether the Church made a sale of goods bearing the mark, in commerce regulable by Congress, before it applied to register its marks. The TTAB's interpretation of the Lanham Act and the "legal tests it applies in measuring registrability" are subject to de novo review by the CAFC.

Congress has broad power under the Commerce Clause. The Supreme Court's has ruled that Congress may regulate activities that have a "substantial effect" on interstate commerce.

In considering whether an activity has a substantial effect on commerce, one must consider the nature of the statutory scheme involved, regardless of whether the particular activity at issue is local or de minimis in nature. Wickard v. Filburn, 317 U.S. 111 (1942).

“That [the farmer’s] own contribution to the demand for wheat may be trivial by itself is not enough to remove him from the scope of federal regulation where, as here, his contribution, taken together with that of many others similarly situated, is far from trivial.” Id. at127–28.

"[W[hen a general regulatory statute bears a substantial relation to commerce, the de minimis character of individual instances arising under that statute is of no consequence," and Congress has the power to regulate it under the Commerce Clause. Gonzalez v. Raich, 545 U.S. 1, 17 (2005), quoting United States v. Lopez, 514 U.S. 549, 558 (1995).

The CAFC observed that its prior rulings in "use in commerce" cases reflect the broad scope of Congress’s Commerce Clause powers. For example, in Larry Harmon, the court argued that the Lanham Act’s requirement could be satisfied by a single-location restaurant and it refused to adopt a de minimus test for the "use in commerce" requirement. 929 F.2d at 663. In Silenus Wines, the CAFC held that the intrastate sale of imported French wine constituted "use in commerce." 557 F.2d at 809.

In the case at hand, the Court found it clear in light 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.

We reach this conclusion without defining the outer contours of Congress’s Commerce Clause powers because the transaction at issue falls comfortably within the bounds of those powers already sketched for us by the Supreme Court. The Lanham Act is a comprehensive scheme for regulating economic activity—namely the marking of commercial goods—and the "use in commerce" pre-registration requirement is an "essential part" of the Act.

The CAFC pointed out that the Church was not required to present evidence of "an actual and specific effect that its sale of hats to an out-of-state resident had on interstate commerce. Nor did it need to make a particularized showing that the hats themselves were destined to travel out of state."

Adidas’s argument that the Church must present actual proof that its sale to Ms. Howard directly affected commerce also contradicts precedent. "[P]roof that the defendant’s conduct in and of itself affected or threatened commerce is not needed. All that is needed is proof that the defendant’s conduct fell within a category of conduct that, in the aggregate, had the requisite effect." quoting Taylor v. United States, 136 S.Ct. 2074, 2080 (2016)

The appellate court pointed out that the definition of "commerce" in the Lanham Act means "all commerce that may be lawfully regulated by Congress." It concluded that because "one need not direct goods across state lines for Congress to regulate the activity under the Commerce Clause, there is likewise no such per se condition for satisfying the Lanham Act’s 'use in commerce' requirement."

And so the CAFC reverses the TTAB's decision and remanded the case to the Board for consideration of  adidas’s other grounds for cancellation (abandonment-and failure-to-function).

Read comments and post your comment here.

TTABlog comment: After this decision, is there any "use" of a trademark or service mark that does not satisfy the "use in commerce" requirement? Is the old "interstate/intrastate" dichotomy dead, as far as "use" goes?

In other words, for application purposes are "first use" and "first use in commerce" now the same thing?

Text Copyright John L. Welch 2016.