As reported by The Fashion Law, Adidas has been trying to register “Adizero,” the name of a line of sneakers, with the U.S. Patent and Trademark Office (USPTO) since 2009. Unfortunately for Adidas, the Chicago-based Christian Faith and Fellowship Church had already trademarked “Add a Zero,” a phrase the church uses on its merchandise, namely shirts and hats. Because of the similarities between the two phrases and the likelihood of consumer confusion, the USPTO refused to trademark “Adizero,” leading Adidas to sue to have the Church’s trademarks cancelled. It offered several arguments as to why the trademarks were invalid, but the main argument considered by the USPTO’s Trademark Trial and Appeal Board was that the church failed to use them in commerce before registration, which is required by the Lanham Act. The church’s only sales were of two hats to a Wisconsin parishioner. The Board ruled for Adidas, finding the church’s sales insufficient to have “a substantial effect on interstate commerce.” However, ruling on the Church’s appeal on Monday, the U.S. Court of Appeals for the Federal Circuit reversed. It found that any activity that Congress can regulate under the Commerce Clause satisfies the Lanham Act requirement; therefore, the church’s sale to an out-of-state buyer “falls comfortably within” the requirement. Moreover, it refused to specify a minimum number of transactions needed to fulfil the requirement. The case has been remanded back to the USPTO Board to consider Adidas’ other arguments.
Prudence Ng is an Entertainment Highlight Contributor for the Harvard Journal of Sports and Entertainment Law and a current first year student at Harvard Law School (Class of 2019).