Adidas Can't Trademark 'Adizero' Because A Small Chicago Church Sold Two 'Add A Zero' Hats To Someone In Wisconsin

from the carry-the-one dept

Just when you think you’ve seen it all in trademark disputes, a story comes along and slaps you across the face with its silliness. Quite often, I find myself writing in support of small groups staving off trademark bullying by big corporate entities. This has far less to do with any hostility to big business than it does with the fact that trademark bullying is a tactic more commonly employed by big business than small business or individuals. But that isn’t always the case and I am certainly not above galloping to the rescue of a huge corporation with so much cash in its coffers that it would make Scrooge McDuck would blush.

For more than half a decade, sports apparel giant Adidas has been trying to trademark “Adizero” as a brand in the United States. It has been unable to do so solely because a small church based in Chicago has a trademark on the phrase “Add a zero” for clothing, and it appears that enough people think this is enough of a problem to hold up the trademark application.

Since 2009, the German sportswear giant has been attempting to federally register its “Adizero” mark but has been unable to due to existing trademarks held by the Chicago-based church, including one that extends to clothing, “namely, shirts, and caps.” Initially, the U.S. Patent and Trademark Office (“USPTO”) refused adidas’ trademark application because of its similarity to the church’s own “Add a Zero” trademarks – the first of which was registered in 2006. According to the USPTO, consumers were likely to be confused due to the similarity of the two parties’ trademarks.

On its face, this concern seems to be quite silly. For starters, one of these marks is a phrase in plain English, while the other is a fanciful portmanteau of sorts that seems to be made up of whole cloth. I’m not even sure the pronunciation for both marks is the same if spoken aloud, but certainly anyone seeing image branding of both side by side would not be rendered dumbstruck in confusion. When one adds to this that one of these entities is a famous brand likely to have its three-striped logo plastered all over an Adizero sportswear, while the other is a confessing Christian organization, this all begins to sound silly.

For its part, Adidas filed a motion with the USPTO in an appeal to have the church’s marks cancelled entirely, arguing both that the church’s marks don’t really act as any kind of source indentifier and that the church isn’t actually using the marks consistently in commerce. The USPTO’s Trademark Trial and Appeal Board agreed and cancelled the marks, noting that the church’s interstate commerce had amounted entirely to it selling two hats to somebody in Wisconsin. It was on the use in commerce question alone, it’s worth noting, that the TTAB made this decision.

The church actually appealed this ruling, saying that the meager duo of hat-sales did represent use in commerce… and the Federal Circuit agreed.

Judge Kara Farnandez Stoll stated on Monday that the Lanham Act’s definition of “use in commerce” includes any activity that Congress could regulate under the Commerce Clause. Sale of clothing to an out-of-state buyer “falls comfortably within” that definition, Stoll wrote in the decision joined by Judges Jimmie Reyna and Todd Hughes.

The Federal Circuit refused to require a specific number of transactions to meet the “use in commerce” standard. To the extent that the TTAB’s own decisions may conflict with that rule, they are expressly overturned, the court held. The Federal Circuit sent the case back to the TTAB for consideration of other arguments raised by adidas.

Here’s hoping that the TTAB finds in favor of Adidas on the other arguments. Meanwhile, apparently two sales qualifies for use in commerce for trademark purposes. Quite a standard we’re setting.

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Companies: adidas

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Comments on “Adidas Can't Trademark 'Adizero' Because A Small Chicago Church Sold Two 'Add A Zero' Hats To Someone In Wisconsin”

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26 Comments
art guerrilla (profile) says:

Re: Poor Adidas

  1. think tech dirt made it clear they were standing on principle/law, whether the beneficiary is Big Co, or little guy…
    2. actually did 5 mins of googling and found out several factoids: as poster downstream proposed, it was about increasing ‘tithing’ to their cult, er, church by adding a zero to the mark’s, er, parishioner’s donation…
    3. they were -at least of article i saw- offered 5000 to ‘settle’ by adidas and they wanted -you guessed it- to AT LEAST add a zero…
    4. from the statements of cult, er, church members, appears to be a legal extortion racket, plain and simple…
    5. apparently, it is adidas ‘thing’ to use the ‘adi’ prefix for marketing BS/fluff: adiColor, adiZero, etc… the ‘zero’ thing is supposed to refer to a lightweight line of shoes, etc…
    6. searching ‘adizero’ came up with a zillion pages of adiCrap from adidas… searching ‘add a zero’ came up with a zillion pages of programming/spreadsheet tips, with one on a church newspaper story about this, and one with a link to techdirt’s story…
    lastly: frankly, i simply refuse to recognize there is ANY basis for the so-called traducement* AT ALL, “adiZero” and “add a zero” are -to me- in no way, shape, or form confusing to differentiate…
    i don’t care if it is cola or clothing, or in the same geographical market, simply not the same thing…
    simply saying something that kinda/sorta sounds like something else is some kind of actionable traducement ? ? ?
    no, that is idiocracy-level shit…
    (*phuck ewe two, spel czech, traducement is a word…)
HegemonicDistortion says:

Why in the world doesn’t the church just sell the trademark to Adidas, for, say, 10 grand? That’s way more than they’ll ever make unless they’ve got a 1000 year plan for return-on-investment. The trustees of the church should really question how the leadership is spending church — i.e. charitable — resources.

Anonymous Coward says:

No, we're not setting a standard.

That standard was already set in Wickard v Filburn in 1942, where the courts ruled that growing wheat for your own use fell under federal regulation.

And cheering on the big guy for taking away the trademark of the little guy? Really?

What you should be rooting for is a judgement where the two trademarks can coexist.

Coyne Tibbets (profile) says:

Primacy

Here’s hoping that the TTAB finds in favor of Adidas on the other arguments.

So what are we saying here? That hopefully the government will come to its senses and grant a multi-billion dollar concern primacy over some uppity little church? Because Adidas is automatically more important?

I thought that was the whole problem with IP law: that the incumbent gorillas always get priority over the aspiring mice. It’s sort of nice to see an incumbent mouse crushing an aspiring gorilla…gives me the feeling the law isn’t all one-sided.

Anonymous Coward says:

No, this is not OK at all.
According to this logic J. K. Rowling sells a lot so she surely deserves first dibs on novel and character names regardless of prior art. Heck why not grant her 400 years of copyright protection too.
Unlike say… oh I dunno… Arthur Crandon (random author found on Google). He’s not as well known so he doesn’t deserve anything.

Jay Harvey says:

Adidas & add a Zero trademark

The comment”why doesn’t the church sell their trademark to Adidas” has the right idea but is asking the wrong question.

Did Adidas offer to purchase their trademark or are they just using their attorneys and endless wealth to intimidate & bully the church into submission?

Most often the big boys turn loose the dogs of war without looking at an amicable resolution first.

LAquaker says:

Run From That Hat

I, for one am sick of ‘church’ people selling the special franchise to God.
A house-O-God ‘owning’ a ‘Trademark’ for increasing your tithe? Do they sell one-time pew positions through Ticketron?

We haven’t ask for a tithe in 350 years, and have 2,000 religious views in our library.

Probably one more after-death cult running as a business.

Allaun Silverfox (profile) says:

Possible correction

The sentence, ” But that isn’t always the case and I am certainly not above galloping to the rescue of a huge corporation with so much cash in its coffers that it would make Scrooge McDuck would blush. “, has a grammatical error. This part in particular, “…would make Scrooge McDuck would blush.” Also, the sentence itself is a run-on sentence.

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