We admit we are talking about Adidas a lot lately, but that is because (i) we truly love their gear, and (ii) they have really been active.
After some bruising encounters with United States trademark law, Adidas SA recently found itself on the ropes again, this time at the hands of a church in Zion, Illinois. The marks in question are a study in phonics:
ZAGREB , CROATIA – 19 FEBRUARY 2015 – Close up logo of sport brand Adidas printed on textile , product shot
ADIZERO running shoes by Adidas vs. ADD A ZERO hats by Christian Faith Fellowship.
In 2005 a small congregation by the name of Christian Faith Fellowship, based in Zion, Illinois, registered a wordmark and a logo mark with the United States Patent and Trademark Office for hats emblazoned with the phrase “ADD A ZERO.” The hats were not a big seller, with only two of them recorded as being sold-critically, with one being paid for by a check drawn on a Wisconsin bank.
In 2009, Adidas was ready to roll out its new, lightweight running shoes, which it dubbed “ADIZERO.” Upon petitioning the USPTO for protection, Adidas’ claim was denied based on the the existence of Christian Faith Fellowship’s prior registration. The USPTO found there to be a likelihood of confusion.
Adidas appealed this decision to the Trademark Trial and Appeal Board (TTAB), arguing that Christian Faith Fellowship’s hats are not a source identifier and that they had sold a very limited number of the hats without showing any significant use in commerce which generally denotes interstate commerce. Christian Faith Fellowship then produced the Wisconsin bank check mentioned earlier, claiming that it indeed had engaged in interstate commerce, even if only for two sales. The TTAB ultimately decided in favor of Adidas, citing the small number of hats that were sold.
Christian Faith Fellowship appealed the TTAB’s decision and found itself battling Adidas before the Federal Circuit. In an effort to get the case thrown out, Adidas argued for a de minimis exception because only two hats had been sold, and Christian Faith Fellowship did not truly engage in interstate commerce. Its argument was denied and the court went on to nullify the TTAB’s decision because case law was clear that the sale of two hats was sufficient to establish interstate commerce.
The circuit court remanded the case back to the TTAB where it is currently under review.
This case is interesting because many practitioners disagree with the Federal Circuit’s ruling. They say it sets a very low standard for interstate commerce and sets up too many obstacles for large producers of trademarked products. What’s your ruling?
Assignment for the Benefit of Creditors: An Alternative to Bankruptcy for Distressed Businesses
When a business reaches the point where it can no longer service its debts or otherwise resolve its liabilities, management is often faced with a difficult question: is a bankruptcy filing necessary or is there another way to perform an orderly liquidation or sale of the business assets? While Chapters 7 and 11 of the […]
Breaking Down New Jersey’s “Mansion” Tax: What Buyers and Sellers Need to Know
For many years, the New Jersey Mansion Tax has been a significant consideration in high-value real estate transactions. Recent legislative changes, however, have substantially altered how the tax operates, including who is responsible for paying it and the amount owed in certain transactions. Whether you are purchasing, selling, or investing in New Jersey real estate, […]
Estate Planning for Digital Assets Under New Jersey Law
As our personal and financial lives increasingly move online, estate planning must evolve to address a new category of property: digital assets. From email accounts and social media profiles to cryptocurrency and cloud-stored business records, these assets often carry both financial and sentimental value. Yet, without proper planning, they can become inaccessible—or even lost—upon incapacity […]
The Role of Representation and Warranty Insurance in M&A Transactions
In today’s mergers and acquisitions market, representation and warranty (R&W) insurance has become a common feature of deal negotiations. Once used primarily in larger transactions, R&W insurance is now frequently incorporated into middle-market deals as buyers and sellers look for efficient ways to allocate risk and close deals. When structured properly, R&W insurance can help […]
You Just Received a Federal Grand Jury Subpoena in New Jersey: Now What?
Receiving a federal grand jury subpoena is not something most businesses or individuals anticipate. While it can be concerning, a federal grand jury subpoena does not necessarily mean that you are being accused of wrongdoing. It does, however, mean that a federal criminal investigation is underway and that federal prosecutors believe you may possess information […]
Why Every Business Should Conduct an Annual Insurance Coverage Review
Most New Jersey business owners purchase insurance policies, file them away, and assume they are protected if a claim arises. Without a regular insurance coverage review, many companies discover gaps only after a lawsuit, cyberattack, property loss, or other significant event occurs. An annual insurance coverage review can help businesses identify potential risks, ensure their […]
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!
