adidas AGv.Christian Faith Fellowship Church

Trademark Trial and Appeal Board

May 22, 2013

No. 92053314 (T.T.A.B. May. 22, 2013)

DUNN
Mailed: May 22, 2013

Cancellation No. 92053314

adidas AG

v.

Christian Faith Fellowship
Church

Before Seeherman, Taylor, and Mermelstein, Administrative
Trademark Judges:

By the Board:

This case comes up on respondent’s motion to amend the
subject registrations and the parties’ cross-motions for summary
judgment on the pleaded issues of nonuse and abandonment.1 The
cross-motions are fully briefed.
Respondent owns two registrations for variants of the same
mark used on the same goods:

1 Unlike petitioner, the Board views CFFC’s cross-motion as only
seeking entry of summary judgment on the pleaded claims of nonuse and
abandonment.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Cancellation No. 92053314

2

Registration No. 3173207
issued November 21, 2006

Registration No. 3173208
issued November 21, 2006

ADD A ZERO
(standard characters)

clothing, namely, shirts, pants and caps

clothing, namely, shirts, pants and caps

On November 23, 2010, petitioner filed a consolidated
petition to cancel the registrations. On November 7, 2011,
petitioner filed, with respondent’s consent, an amended
consolidated petition to cancel which became the operative
pleading. Petitioner alleges ownership of the mark ADIZERO in
standard characters for “footwear, shirts, singlets, jackets,
shorts, tights, bottoms”, which is the subject of application
Serial No. 77822018; that its application has been refused
registration under Trademark Act Sec. 2(d) based on respondent’s
registrations; and that, inter alia, respondent’s marks were not
in use at the time the applications underlying the subject
registrations were filed; that the marks have never been used in
connection with the “pants” listed in the registration; and that
respondent has abandoned the registered marks.
In its answer to the amended petition, respondent admitted
that petitioner’s application has been refused registration
under Trademark Act Sec. 2(d) based on respondent’s
Cancellation No. 92053314

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registrations, and admitted that respondent has never used the
mark on pants. Discovery closed March 3, 2012.
On April 4, 2012, petitioner moved for summary judgment,
arguing that respondent’s ADD A ZERO mark for clothing was not
in use “in commerce” at the time the applications underlying
CFFC’s registrations were filed because respondent purchased the
shirts and caps from an Illinois supplier and respondent’s sales
were limited to respondent’s bookstore in Illinois; that
respondent has admitted that it has never used the mark with
pants; and that respondent has provided evidence that it sold
only two shirts over the four year period prior to the
commencement of this proceeding; and this is insufficient to
avoid a finding of abandonment of the mark.
In support of its motion petitioner has submitted the
declaration of attorney John Zaccaria and exhibits2, including
excerpts from the discovery depositions of respondent’s
witnesses, Craig Mason, its treasurer, secretary, and executive
pastor, and Edward Logan, its senior pastor3; and the declaration

2 The Zaccaria exhibits include copies of the registration files;
respondent’s invoices, accounting report, and bookstore receipt
journal; respondent’s letters and emails involving the mark; and
discovery responses.

3 Respondent argues that it is not bound by the statements of
witnesses Mason and Logan because they testified as both Fed. R. Civ.
P. 30(b)(6) witnesses and in their individual capacities. Respondent
has provided no legal support for this argument. Respondent
designated them as 30(b)(6) witnesses, and therefore we must presume
that they are competent to testify on behalf of respondent as to the
Cancellation No. 92053314

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of petitioner’s investigator Edgar Bridges and his attached
report attesting to his two unsuccessful attempts in May 2010 to
buy ADD A ZERO merchandise from respondent, during which he was
told that the ADD A ZERO mark had not been used for years.4
On May 3, 2012, respondent moved to amend the subject
registrations to delete “pants” from the recitation of goods.
On May 9, 2012, respondent filed a combined opposition to
petitioner’s motion for summary judgment and cross-motion for
summary judgment. Noting that respondent is a church located in
Zion, Illinois and its ADD A ZERO clothing is sold in a
bookstore located in its church building which is located in
Zion, respondent argues that, inasmuch as its church members
travel from out of state to attend services and purchase ADD A
ZERO shirts and caps from the bookstore, respondent’s use
affects interstate commerce; that the sale in respondent’s
bookstore of foreign-made ADD A ZERO clothing acquired from an

topics designated in the notice of deposition for the Fed. R. Civ. P.
30(b)(6) witnesses. The fact that they also have personal knowledge
of additional facts regarding the designated topics would not detract
from this testimony.

4 With respect to CFFC’s argument that the investigator’s
declaration regarding information provided by the individuals who
answer the church phone on CFFC’s behalf is inadmissible, we note that
(i) the investigator is relaying information about his personal
experience and (ii) a statement offered against an opposing party is
not hearsay if the statement “was made by the party’s agent or
employee on a matter within the scope of that relationship and while
it existed.” Federal Rule of Evidence 801(d)(2)(D). We distinguish
the case cited by CFFC as it involved an attorney’s declaration
regarding a conversation in which he took no part. In re American
Olean Tile Company Inc., 1 USPQ2d 1823, 1824 n2 (TTAB 1986).

Cancellation No. 92053314

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Illinois company affects foreign commerce; that respondent’s use
of the mark on its goods was not merely intrastate at the time
the applications were filed; that the lack of use with pants
does not make the applications void ab initio; that the ADD A
ZERO mark has remained in use to the present; that, with the
exception of a period of months in 2008 when the bookstore was
closed, the clothing has been constantly available in the
bookstore; that the modest sales are bona fide transactions
appropriate for a church bookstore; that respondent has no
intent to discontinue its use of the ADD A ZERO mark; and that
the mark has not been abandoned. In support of its combined
opposition and cross motion respondent submitted the
declarations of Craig Mason, its treasurer, secretary, and
executive pastor, and attorney John Conour, and exhibits.5
Summary judgment is an appropriate method of disposing of
cases that present no genuine disputes of material fact, thus
leaving the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(a). The evidence must be viewed in a light favorable
to the nonmoving party, and all justifiable inferences are to be
drawn in the nonmovant's favor. Lloyd's Food Products, Inc. v.

5 Respondent’s exhibits include photographs of clothing labels
showing foreign manufacture; a photo of the bookstore showing clothing
bearing the mark on display; the Morris and Logan notices of
deposition and excerpted transcript pages; and respondent’s receipt
journal, website roadmap, accounting report, interrogatory responses,
and registrations.

Cancellation No. 92053314

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Eli's, Inc, 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993);
Opryland USA Inc. v. The Great American Music Show, Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Here, each moving party has the burden of demonstrating the
absence of any genuine dispute of material fact, and that it is
entitled to judgment as a matter of law. See Celotex Corp. v.
Catrett, 477 U.S. 317 (1986). The mere fact that cross-motions
for summary judgment have been filed does not necessarily mean
that there are no genuine disputes of material fact, and that a
trial is unnecessary. See University Book Store v. University
of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389-90 (TTAB
1994).
First, inasmuch as respondent admits that petitioner’s
application was refused registration based on likelihood of
confusion with respondent’s registrations, petitioner’s standing
to bring its claims is established. Life Zone Inc. v. Middleman
Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008).
Turning to petitioner’s claim that the marks were not in
use in commerce on the “pants” listed in the registrations at
the time the underlying applications were filed, there is no
genuine dispute of material fact inasmuch as respondent’s answer
admits that respondent has never used the mark on pants, and, in
lieu of an opposition to the motion, respondent filed a motion
to amend the subject registrations to delete “pants” from the
Cancellation No. 92053314

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identification of goods. Accordingly, petitioner’s motion for
summary judgment is granted, and respondent’s motion to amend is
granted.6 See Grand Canyon West Ranch LLC v. Hualapai Tribe, 78
USPQ2d 1696, 1698 (TTAB 2006). Cf: Spirits International B.V.
v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri
Birligi, 99 USPQ2d 1545, 1547 n.3 (TTAB 2011).
With respect to the claims of nonuse and abandonment, we
begin with some general comments. Section 45 of the Trademark
Act states that a mark shall be deemed to be used in commerce on
goods when “it is placed in any manner on the goods … and the
goods are sold or transported in commerce”; and that “commerce”
includes “all commerce which may lawfully be regulated by
Congress”.
“‘[C]ommerce’ includes intrastate transactions that affect
interstate or foreign commerce.” In re Silenus Wines, Inc., 557
F.2d 1977, 194 USPQ 261, 266-267 (CCPA 1977). The issue is
whether the transactions exert “a substantial economic effect on
interstate commerce, and irrespective of whether such effect is
what might at some earlier time have been defined as ‘direct’ or
‘indirect.’” Wickard v. Filburn, 317 U.S. 111, 125 (1942).
Accord, In re U.S. Home Corporation of Texas, 201 USPQ 602, 604

6 Respondent also filed, on February 24, 2012, declarations under
Trademark Act Sec. 8 in which it deleted “pants” from each
registration. Inasmuch as this occurred after commencement of this
proceeding, the Sec. 8 filing does not allow respondent to avoid entry
of judgment on the claim that the mark was not in use with pants when
the underlying use-based applications were filed.
Cancellation No. 92053314

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(TTAB 1978) (“We fail to perceive that what applicant does has
any substantial effect on interstate commerce.”). Evidence that
the mark has been used in connection with services rendered to
customers traveling across state boundaries may be sufficient
for the use in commerce requirement. Larry Harmon Pictures
Corp. v. Williams Restaurant Corp., 929 F.2d 662, 18 USPQ2d
1292, 1295 (Fed. Cir. 1991); Pamex Foods, Incorporated v. Clover
Club Foods Company, 201 USPQ 308, 314 n.5 (TTAB 1978).
Section 45 of the Act further states that “[a] mark shall
be deemed to be ‘abandoned’ … [w]hen its use has been
discontinued with intent not to resume such use” and “‘Use’ of a
mark means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in a
mark.” 15 U.S.C. 1127. Merely not intending to abandon a mark
is not enough to sustain rights in it. First National Bank of
Omaha v. Autoteller Systems Service Corp., 9 USPQ2d 1740, 1743
(TTAB 1988).
Upon careful consideration of the evidence and arguments of
both parties, we find that respondent’s evidence lacks
convincing detail as to the interstate and foreign impact of
respondent’s admittedly sparse sales in its bookstore of its ADD
A ZERO marks on clothing, as well as for the sales and
availability for sale of respondent’s ADD A ZERO clothing in the
four years immediately prior to this proceeding. Nonetheless,
Cancellation No. 92053314

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while petitioner presents a much stronger case on this record,
we are constrained in considering a motion for summary judgment
to view the evidence in a light favorable to respondent as the
non-moving party, and to draw all justifiable inferences in
respondent’s favor. We therefore find that petitioner has not
sustained its burden of establishing the absence of a genuine
dispute of material fact. There are, at a minimum, genuine
disputes remaining for trial relating to the impact of
respondent’s sales of ADD A ZERO clothing in commerce which
Congress may regulate, and whether respondent’s two sales in
four years are, in light of all the circumstances, sufficient to
constitute bona fide transactions in the ordinary course of
trade.
In sum, petitioner’s motion for summary judgment is granted
as to the claim of nonuse on pants; the term “pants” is deleted
from the identification of goods in the subject registrations;
and the cross-motions for summary judgment are denied as to the
claims of nonuse and abandonment.
Proceedings herein are resumed, and dates are reset as
follows:
Discovery CLOSED
Plaintiff's Pretrial Disclosures 7/4/2013
Plaintiff's 30-day Trial Period
Ends 8/18/2013
Defendant's Pretrial Disclosures 9/2/2013
Defendant's 30-day Trial Period
Ends 10/17/2013
Plaintiff's Rebuttal Disclosures 11/1/2013
Cancellation No. 92053314

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Plaintiff's 15-day Rebuttal Period
Ends 12/1/2013

In each instance, a copy of the transcript of testimony,
together with copies of documentary exhibits, must be served on
the adverse party within thirty days after completion of the
taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rules
2.128(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.