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

Tue, Nov 22nd 2016 5:10pm — Timothy Geigner

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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Filed Under: add a zero, adizero, trademark, use in commerce
Companies: adidas

26 Comments

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J.R., 22 Nov 2016 @ 5:42pm

Poor Adidas
Poor, poor Adidas ... my heart pumps purple koolaide for them.
Hope poor Adidas doesn't go bankrupt over this.

But if they do, I'll make a note to shed a tear for poor Adidas, someday ... when there's pie in the sky. Poor babies.

Sniffle ...
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HegemonicDistortion (profile), 22 Nov 2016 @ 5:46pm

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.
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Anonymous Coward, 22 Nov 2016 @ 6:08pm

The real issue
The church knows that ADIDAS stands for All Day I Dream About Sex. How could they allow such a heathen company gain their important trademark. I hear they might be selling a third hat, and to someone in Michigan.
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Whoever, 22 Nov 2016 @ 7:28pm

Is this really such a bad thing?
Once you start insisting on a minimum sales volume to qualify to keep a trademark, then you get onto a slope which ends with the state where a larger company can always get hold of a trademark, despite a smaller company using it.
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Anonymous Coward, 22 Nov 2016 @ 7:32pm

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.
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Coyne Tibbets (profile), 22 Nov 2016 @ 8:10pm

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.
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Arrogant Bastard, 22 Nov 2016 @ 10:31pm

It's the next step that counts
If granted copyright over the term, adidas would then feen emboldened to sue the church for infringement. The immediate outcome of the case is not always the important result....
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Anonymous Coward, 23 Nov 2016 @ 12:32am

Re:
Funny, I don't see any report of the giant company offering the tiny church anything for that trademark, ever.

Perhaps if they had tried before starting legal proceeding it would have cost them a fraction of what it will now.

And rightfully so. Play stupid games, get stupid prizes.
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Vidiot (profile), 23 Nov 2016 @ 4:36am

'Splain to me, Lord
Just out of curiosity, exactly what does "Add a Zero" mean, in a churchy context? What does it signify? And what is the potential for consumer confusion that therefore arises?
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Anonymous Coward, 23 Nov 2016 @ 5:20am

Re: 'Splain to me, Lord
I assume it means that they want you to tithe more.
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Cecil, 23 Nov 2016 @ 5:36am

Volume is not part of the law
A single instance of mail fraud will land you in jail just like a thousand instances... I am surprised at your attitude in this matter. The church registered it, they are saying it's still in use, and they weren't presented as the aggressor here. Excuse me while I go register "add a 0x0000".
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Coyne Tibbets (profile), 23 Nov 2016 @ 7:38am

Re: 'Splain to me, Lord
Instead of giving $200, add a zero and give $2000. Obvious.
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Anonymous Coward, 23 Nov 2016 @ 7:54am

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.
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Anonymous Coward, 23 Nov 2016 @ 8:10am

Re: No, we're not setting a standard.
Exactly. Somebody should get Timothy a primer on trademark law since he clearly doesn't understand the doctrines and hasn't given the subject much thought.
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Jay Harvey, 23 Nov 2016 @ 9:44am

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.
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Casey, 23 Nov 2016 @ 9:45am

Uhh...yes it does
"Meanwhile, apparently two sales qualifies for use in commerce for trademark purposes"

The courts plain reading of the Act expressly says there is no lower limit. So your comment there Timothy is so much extraneous bullshit.

Do you have a connection with Addidas?
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Anonymous Coward, 23 Nov 2016 @ 10:41am

"According to the USPTO, consumers were likely to be confused due to the similarity of the two parties' trademarks."

Just goes to show just how stupid the USPTO thinks everyone is.
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LAquaker, 23 Nov 2016 @ 2:49pm

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.
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Spaceman Spiff (profile), 23 Nov 2016 @ 6:52pm

Just pay them!
Adidas has very deep pockets. Instead of continuing to pay lawyers for this, just make the church an offer they can't refuse. It will save everyone a lot of pain and suffering.
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Anonymous Coward, 24 Nov 2016 @ 1:47am

Poor adidas. Good thing we have people like tim to rally support for this poor company.
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art guerrilla (profile), 24 Nov 2016 @ 5:59am

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...)
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Allaun Silverfox (profile), 27 Nov 2016 @ 5:03pm

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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Niall (profile), 28 Nov 2016 @ 4:23am

Re: Re: No, we're not setting a standard.
He certainly didn't sound like he was against that - just pointing out that given the differences there was no reason to refuse Adidas access to 'Adizero' - would be different if that wanted 'Add a zero'.
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Niall (profile), 28 Nov 2016 @ 4:26am

Re: Possible correction
As a Scot, I would just criticise the concept that Scrooge McDuck can even blush...
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Robert (profile), 7 Dec 2016 @ 1:17pm

Addidas is being ridiculous
I don't care if the church sold 1 piece of gum, they went through the process of registering the name, it is theirs. Why doesn't this shoe company offer them a little cash, instead of saying that their sales sucks and since they are bigger they should be given someone elses trade mark
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