By Debby Winters
The United States Patent and Trademark Office (USPTO) requires that there be use of the mark in commerce, both in registering the mark and continued use to maintain the mark. There have always been questions about what constitutes use in commerce, as there are no hard and fast rules. Now there’s a question about how much use must there be before it is considered de minimis use. The reason this has come up is that the USPTO’s Trademark Trial and Appeal Board (TTAB) issued a non-precedential opinion in the cancellation case of Adidas AG v Christian Fellowship Church that could have potentially instructive influence on the future of the definition of use in commerce. The case analyzed whether sales of only a small number of goods by Christian Fellowship Church constituted “use in commerce” under the Trademark Act.
Adidas had filed a trademark application for the mark Adizero, which was refused based upon a likelihood of confusion with two trademark registrations owned by the respondent, Christian Fellowship Church, for the mark Add A Zero (one stylized and one in standard letters). Adidas subsequently filed a petition for cancellation, claiming, among other things, that the registrations were void ab initio because the subject marks were not in use in interstate commerce as of the filing date of the underlying use-based applications.
The TTAB set out to explore the extent to which Christian Fellowship Church had used its Add A Zero marks. The evidence in this case showed that Christian Fellowship Church operated a church that had a bookstore in the basement where it sold roughly 150 shirts and caps embroidered with the Add A Zero mark. This “modest quantity” was sold at the retail store. Adidas alleged non-use based on these facts and Christian Fellowship Church pointed to sales of one shirt and one cap made on one date and two caps made on a subsequent date to customers who may have been out-of-state purchasers. However, Adidas pointed out that the sales were still within the state, even if purchased by an out-of-state purchaser.
The question was whether this was in fact “use in commerce.” The TTAB found that these sales did not constitute interstate commerce. Although the decision in Adidas AG is not precedential, it may serve as an indicator as to how the TTAB will decide future cases where a registrant has only sold a relatively small number of goods and where those sales are local, regardless of whether they are to residents of another state. Caution is warranted for trademark owners when basing a use-based trademark application on the sale of only a few of the products to be identified in their applications. Similarly, parties seeking to cancel a trademark registration based on non-use would be wise to explore the amount of products that a registrant had sold under the mark at issue.