The long running trademark dispute between Adidas and a church in Illinois just had a decision handed down by a federal appeals court. Adidas thought it could outrun a church in Zion Illinois, but it appears that they miscalculated the church’s endurance.
In 2009, Adidas applied to register the ADIZERO mark for athletic apparel. Unfortunately for them, this church had registered the ADD A ZERO mark for apparel as part of fundraising drive in 2005, selling apparel and encouraging people to “add a zero” to their donations. That registration blocked the Adidas application. Adidas then challenged the registration seeking to cancel it on multiple grounds, including a lack of interstate sales.
The TTAB found in favor of Adidas, saying that the sale of two hats to a parishioner living in Wisconsin was insufficient interstate commerce, and cancelled the church’s registration. The church then appealed to the Federal Circuit.
Adidas argued for a de minimis exception, claiming that the sale of two hats was insufficient interstate activity to trigger the commerce clause and what congress could regulate. Unfortunately for Adidas, the commerce clause is broad. In Wickard v. Filburn, the Supreme Court ruled that the commerce clause covered growing wheat for purely personal use. Either Adidas didn’t realize, or they thought, along with many people, that Wickard went to far. Unfortunately for Adidas, the Federal Circuit didn’t agree.
The Federal Circuit ruled that the sale of those two hats comfortably fit into the “use in commerce” requirement that the Lanham Act puts forward. That makes sense, seeing as the Federal Circuit has to follow precedent, and two hats sold across state lines seems to be interstate commerce, especially if wheat grown to feed your own livestock is covered under interstate commerce. Unfortunately for Adidas, the case was remanded for decision on other grounds not decided at the TTAB. So, if they were planning to challenge Wickard, or at least distinguish it, they’re going to have to fight for a while longer.
The ADIZERO application was filed in 2009. I’m assuming Adidas wasn’t expecting to lose at the Federal Circuit 7 years later. I’m also assuming they didn’t think the Church would pursue it this long. They could be pursuing ADIZERO to point of trying to overturn Wickard at the Supreme Court. However, I’m thinking that if they continue, they’re looking to create a de minimis exception, and that’s probably more important to them than ADIZERO. After all, any mark they use will fall under interstate commerce, so they don’t have to worry about a de minimis exception. It would create a path to get rid of a lot of inconvenient prior registrations, however, like ADD A ZERO.