Adidas Suffers Defeat in Trademark Dispute with Church
In a recent development, the U.S. Court of Appeals for the Federal Circuit has blocked adidas from registering a trademark that sounds confusingly similar to a trademark registered by a small church. The ruling, which took place in a court in the Netherlands, is specific to Belgium, the Netherlands, and Luxembourg.
The case revolves around the trademarks Stoli and Stolichnaya, which are currently owned by Sojuzplodoimport, a state-owned company from Russia. The opposing party in the case is the SPI Group, a spirits company founded in Russia.
The church's trademarked fundraiser, "Add a Zero," encouraged donors to add an extra zero to their donations. In 2009, adidas tried to register a federal trademark "Adizero," but the application was denied due to a similar trademark registered by the Christian Faith and Fellowship Church for merchandise such as shirts and caps. Adidas offered $5,000 to the church to give up its trademark, but the church felt the amount was too small.
The church sold a grand total of two hats to a parishioner who lived within 5 miles of the church. However, the TTAB (Trademark Trial and Appeal Board) cancelled the trademark for non-use because the sale was considered too small. The church appealed to the Federal Circuit and won last week, with the court ruling that even a small sale should count as "use in commerce."
The Federal Circuit sent the case back to the TTAB for consideration of other arguments raised by adidas. It's important to note that this ruling is not the final decision in the case.
The De Minimis Exception
The case is significant because it highlights the concept of the de minimis exception in the context of "use in commerce" under the Lanham Act in U.S. trademark law. This exception refers to situations where the use of a mark is so minimal or trivial that it does not satisfy the statutory requirement of genuine use in commerce necessary to support trademark claims or registration.
Courts require evidence of genuine, ongoing commercial use that would create a likelihood of consumer recognition, and isolated or negligible uses may be disregarded. Past or limited authorizations to use a mark do not guarantee meeting the use in commerce criterion if current or independent use is unauthorized or minimal. Precise identification and substantial use per USPTO and court precedents are critical to meet the Lanham Act's statutory requirements.
This ruling serves as a reminder that even small sales or uses can potentially constitute "use in commerce," and that trademark rights are not easily granted or maintained without substantial and genuine use.
[1] AL Infinity v. Westview, 98 USPQ2d 1528 (TTAB 2011) [2] In re Christian Faith and Fellowship Church, 125 USPQ2d 1859 (TTAB 2018)
- The recent ruling by the Federal Circuit in the case of Christian Faith and Fellowship Church's trademark dispute with adidas highlights the significance of the de minimis exception in the context of the Lanham Act, where even small sales or uses can potentially constitute "use in commerce" for trademark claims.
- In the realm of business and finance, the de minimis exception in trademark law as elucidated by the Federal Circuit court case between adidas and the Christian Faith and Fellowship Church underscores the importance of substantial and genuine use of a trademark to maintain rights, as isolated or negligible uses may be disregarded.
