Finding Lack of Use in Commerce, TTAB Orders Cancellation of "ADD A ZERO" Registrations

The Board 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 the Church had not used the marks in commerce prior to the filing date of the underlying applications. adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (September 14, 2014) [not precedential].

Respondent operates a church in Zion, Illinois, near the Wisconsin border, and its members come from both states. In 2004, it began selling shirts and caps bearing the subject marks, purchasing the items from an Illinois company. The items were sold only in the church bookstore (in Illinois), prior to the filing of the underlying applications in March 2005. The Church submitted evidence of two sales transactions in an effort to counter Petitioner's claims of non-use. The sales were made at the bookstore to two different individuals.

The Board observed that an application filed under Section 1(a) is void ab initio if the mark was not in use in commerce in connection with the identified goods prior to the filing date of the application. It noted that "commerce" includes intrastate transactions that affect interstate or foreign commerce. The Church maintained that the two sales at its bookstore in Illinois, together with its ability to sell the goods to out-of-state parishioners who cross state lines to attend the church, were sufficient to satisfy the "in commerce" requirement because they have an effect on interstate commerce.

As to the first transaction, it was not clear whether the purchaser was a resident of Illinois. The second purchaser, however, paid with a check having a Wisconsin address, and the Board concluded that she crossed state lines when she made her purchase of two caps at the church bookstore.

The Board concluded that the Church's activities did not have an effect on interstate commerce. It distinguished the three cases cited by the Church: Gastown, Silenus Wine, and Larry Harmon.

In Gastown, the CCPA held that a gas station that provided services to customers traveling interstate on federal highways had a direct effect on interstate commerce, noting that the involved vehicles "[o]bviously ... could not travel at all without the gasoline."

In Silenus Wines, the CCPA allowed registration of a mark used on imported wine sold intrastate because "were it not for the intrastate sales anticipated by the appellant-importer, the foreign commerce that occurred ... would probably not have occurred - unquestionably a direct effect."

And in Larry Harmon, the CAFC held that a single-location restaurant that served interstate travelers was using its mark "in commerce."

Here, the Board found, "the sale of two ADD A ZERO caps at a minimal cost within the state of Illinois to Ms. Howard [the second purchaser], who resides outside the state, does not affect interstate commerce that Congress can regulate such that the transaction would constitute use in commerce for purposes of registration."

The Church provided no support for the proposition that merely offering the goods in the bookstore to parishioners who reside out of state, combined with the aforesaid two sales, constituted use of the marks in commerce. "Respondent cannot rely on the fact that its goods could have been purchased by people who reside out of state." The sale in Illinois of two caps to a Wisconsin resident "is de minimis and, under the circumstances shown here, is insufficient to show use that affects commerce."

The Board therefore ordered cancellation of the two registrations on the ground of non-use.

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TTABlog comment: Holy mackerel. That is harsh, isn't it? If the Church had purchased the goods from out-of-state, would that have made a difference? I think not.

Text Copyright John L. Welch 2015.