You want to apply to register a trademark. One of the first questions your lawyer will ask you is if you have used the mark in commerce yet. Seems like a simple question right? Think again. The Court of Appeals for the Federal Circuit (“CAFC”) released a decision in November in the case Christian Faith Fellowship Church v. Adidas AG, that addresses what is “use in commerce”. The case suggests that almost any genuine use of a mark in any way that touches on more than one state is use in commerce.
Christian Faith Fellowship Church (the “Church”) is located in Zion, Illinois, near the Wisconsin border. The Church began using the mark ADD A ZERO on t-shirts and hats in 2005 and registered the mark for these goods. In 2009, Adidas AG (“Adidas”) applied to register the mark “ADIZERO” for apparel, and the application was blocked by the Church’s “ADD A ZERO” registrations. Adidas filed an action before the Trademark Trial and Appeal Board (“TTAB”) to cancel the Church’s registrations on several grounds including the Church’s failure to use the marks in commerce as of the date claimed in the registrations. As evidence of use of the mark in commerce, the Church offered a canceled check that a Wisconsin resident, whose Wisconsin address was on the check, used to buy two ADD A ZERO caps from the Church’s Illinois location.
The question posed to the CAFC was whether the sale of two caps with the mark ADD A ZERO by the Church in Illinois to a Wisconsin resident (who was in Illinois when buying the caps) was enough to be use of the mark in commerce that could lawfully be regulated by Congress.
To answer the question, one needs to first look at federal trademark law. The Lanham Act governs federal trademarks and states that, “[t]he owner of a trademark used in commerce may request registration of its trademark.” (emphasis added). When it comes to goods, the term “use in commerce” means the bona fide use of the mark on tags, labels or affixed to goods that are sold or transported in commerce. The Lanham Act goes on to define “commerce” as “all commerce which may lawfully be regulated by Congress.”
The CAFC court held that the Church’s in-state sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause, and that this sale was use in commerce under the Lanham Act. The CAFC reversed the TTAB’s cancellation of the Church’s registrations.
Given the low bar set by the CAFC on what constitutes “use in commerce,” brand owners will be well advised to explore with counsel all reasonable business resolutions when faced with third party issues that center on whether a mark has been used in commerce. For brand owners, this case may mean that their marks were in use earlier than once thought and rights may reach back to earlier dates. It may also mean that it will be more difficult to cancel third party registrations for lack of use of a mark in commerce. In either case, factual assessment and strategy will be important.