adidas AGv.Christian Faith Fellowship Church

Trademark Trial and Appeal Board

Nov 13, 2019

92053314 (T.T.A.B. Nov. 13, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

adidas AG
v.
Christian Faith Fellowship Church
_____

Cancellation No. 92053314
_____

On Remand
_____

Angelo Notaro, John Zaccaria and Bradley S. Corsello of Notaro, Michalos &
Zaccaria, P.C.,
for adidas AG.
Richard W. Young and John E. Conour of Quarles & Brady LLP,
for Christian Faith Fellowship Church.
_____

Before Thurmon1, Deputy Chief Administrative Trademark Judge,
Taylor and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

1 Judge Seeherman sat on the panel and participated in writing the September 14, 2016
decision. Judge Seeherman has since retired, and Deputy Chief Administrative Judge
Thurmon has been substituted for her on the panel deciding this case. The change in
composition of the panel does not necessitate a retrial of this case. In re Bose Corp., 772 F.2d
866, 227 USPQ 1, 4 (Fed. Cir. 1985); Hunt Control Sys. Inc. v. Koninklijke Philips Elect. N.V.,
98 USPQ2d 1558, 1560 n.1 (TTAB 2011).
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I. Background
adidas AG (“Petitioner”) filed a petition for cancellation of two registrations owned
by Christian Faith Fellowship Church (“Respondent” or the “Church”) for the marks
ADD A ZERO (in standard characters) and ADD A ZERO in special form with design,
displayed as
for, as amended, “clothing, namely, shirts
and caps.”2
The grounds for cancellation are (1) nonuse prior to the filing dates of
Respondent’s use-based applications, rendering the registrations void ab initio; (2)
abandonment of Respondent’s registrations based on at least three consecutive years
of nonuse with intent not to resume such use; and (3) failure of the marks to function
as trademarks because ADD A ZERO is simply an informational slogan.3

2 Registration Nos. 3173207 and 3173208, respectively, both issued on November 21, 2006,
and both have been renewed. Respondent filed applications for the former on March 23, 2005,
and the latter on March 24, 2005. Color is not claimed as a feature of the mark in Registration
No. 3173208, and there is no description of the mark.
3 The petition for cancellation also includes a claim that Respondent’s marks are “ornamental
and/or functional” (Pet. ¶¶ 24, 26, 11 TTABVUE 4), but Petitioner did not pursue this claim
at trial or in its briefs. The claim, therefore, is deemed to be waived. Krause v. Krause Publ’ns
Inc., 76 USPQ2d 1904, 1906 n.2 (TTAB 2005). We also note that the petition for cancellation
originally included a claim for partial cancellation of the registrations pursuant to Section 18
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Respondent, in its answer to the petition, admitted that Petitioner’s application,
Serial No. 77822018 for the mark ADIZERO, has been refused registration under
Section 2(d) based on Respondent’s registrations, and that Respondent never used
the marks on pants,4 and denied the remaining salient allegations in the petition.
Both parties filed briefs, and Petitioner file a reply brief.
In a decision dated September 14, 2016, the Board granted the petition for
cancellation on the ground of nonuse, finding that Respondent’s sale of two caps to
an out-of-state resident in the Church’s bookstore prior to filing the use-based
applications was not sufficient to satisfy the “use in commerce” requirement to
register a mark.5 In view of this finding, the Board did not reach the remaining issues
of abandonment and failure to function.6 On appeal, the U.S. Court of Appeals for the
Federal Circuit reversed the Board’s finding of nonuse and remanded for further
proceedings. Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986, 120
USPQ2d 1640, 1647 (Fed. Cir. 2016).
We presume the parties are familiar with the record and evidentiary objections
pending in this case.7 We need not and do not address any evidentiary objections

of the Trademark Act, 15 U.S.C. § 1068. On February 3, 2014, the Board granted Petitioner’s
motion to withdraw said claim, and dismissed the claim with prejudice. 46 TTABVUE 1.
4 The registrations originally included “pants” in the identification of goods, but these goods
were deleted from the registrations with preclusive effect. See May 22, 2013 Board Order. 31
TTABVUE 6-7, 9.
5 67 TTABVUE 17.
6 67 TTABVUE 2-3.
7 The Board made certain evidentiary rulings in the September 14, 2016 Board Order, which
pertained only to evidence concerning Petitioner’s nonuse claim. 67 TTABVUE 3-9. The
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raised by either party as none of the evidence to which an objection has been raised
is outcome determinative, and we have not relied on any of it in reaching our
decision.8 We turn now to the remaining two grounds for cancellation.
II. Abandonment/Intent to Resume Use
Section 45 of the Trademark Act, 15 U.S.C. § 1127, states, in pertinent part, that
abandonment of a mark occurs
When its use has been discontinued with intent not to resume such use.
Intent not to resume may be inferred from circumstances. Nonuse for 3
consecutive years shall be prima facie evidence of abandonment. “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.

A petitioner for cancellation of a registration on the ground of abandonment bears
the burden of proving its case by a preponderance of evidence. See On-Line Careline
Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000);
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393
(Fed. Cir. 1990); Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989). Petitioner must meet this burden by
showing that, with respect to any particular identified good, the mark’s “use has been
discontinued with intent not to resume such use.” 15 U.S.C. § 1127.
For the reasons we discuss below, we find Petitioner to have failed to establish a
prima facie case of abandonment as to the use of Respondent’s mark on shirts, and

record includes all other items detailed in Petitioner’s brief (58 TTABVUE 6-8), as
supplemented by Respondent’s brief (60 TTABVUE 6).
8 Indeed, we reference only one such piece of evidence, and do so in a footnote at the end of
our discussion on the abandonment claim, where we explain why it is not outcome
determinative.
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Respondent’s showing of excusable nonuse of the mark on caps overcomes Petitioner’s
prima facie showing of abandonment of the mark as to those goods.
Petitioner bases its case primarily on the absence of sales of caps and the minimal
sales of shirts during the four-year period between November 21, 2006, the date on
which the registrations issued, and November 23, 2010, the date on which the instant
petition was filed. The documentary evidence of use of the marks on Respondent’s
identified goods during that four-year period consists solely of a receipt journal
covering the period of January 1, 2005 to July 22, 2011, which Respondent produced
during discovery, and which both parties made of record.9 Respondent’s witness,
Craig Mason, who serves as Respondent’s secretary, treasurer and executive pastor,
explained that the receipt journal lists all sales of ADD A ZERO shirts and caps.10
During the period between November 21, 2006 and November 23, 2010, the receipt
journal lists the sale of one hoodie on January 7, 2007, one crew shirt on August 30,
2009, and no caps.11 However, Mr. Mason testified that Respondent offered ADD A
ZERO shirts and hats in Respondent’s bookstore continuously since 2006 to the time
of his testimony, with the exception of 2008, when the bookstore was closed for
renovation.12 In addition, as we found in the September 14, 2016 decision, it is

9 Petitioner made the receipt journal of record with its Ninth Notice of Reliance, as Exhibit 7
to the Mason Discov. Dep., 36 TTABVUE 475-492. Respondent also introduced the receipt
journal as Exhibit 2 to the Mason Tr. Test., 50 TTABVUE 50-67.
10 36 TTABVUE 401.
11 36 TTABVUE 484.
12 36 TTABVUE 410-411, 413-416. The parties have used the terms “caps” and “hats”
interchangeably, and we follow suit in this decision.
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undisputed that Respondent launched its on-line bookstore (and first made ADD A
ZERO merchandise available for sale through the on-line bookstore) in December
2010.13 The receipt journal shows that Respondent sold three ADD A ZERO shirts on
December 19, 2010, and a number of ADD A ZERO shirts and caps and thereafter.14
Petitioner contends that Respondent’s sale of two shirts and no caps during the
aforementioned four-year period comprises a prima facie case of abandonment of the
marks on the goods, and creates a rebuttable presumption that Respondent did not
intend to resume use of the marks on the goods.
Turning first to ADD A ZERO shirts, we find that there is no period of three
consecutive years when Respondent sold no shirts. While Respondent’s sale of two
shirts from January 7, 2007 to August 30, 2009 are admittedly “modest,”15 and Mr.
Mason acknowledged, in connection with the December 2010 “Add A Zero relaunch,”
that “sales on the Add A Zero apparel had been slow,”16 nothing in the record supports
a finding that such sales were not “bona fide use[s] of [the] mark[s] in the ordinary
course of trade,” rather than “made merely to reserve a right in [the] mark[s].” 15
U.S.C. § 1127.
Moreover, we are constrained by the holding of the Federal Circuit in this
proceeding that “the Church’s sale of two ‘ADD A ZERO’-marked hats to an out-of-

13 67 TTABVUE 5 (referencing in n.11 Respondent’s Answers to Interrogatory Nos. 3 and 7,
36 TTABVUE 286-287, and 36 TTABVUE 436).
14 36 TTABVUE 484-492.
15 50 TTABVUE 9.
16 36 TTABVUE 427.
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state resident is regulable by Congress under the Commerce Clause, and, therefore,
constitutes ‘use in commerce’ under the Lanham Act.” Christian Faith Fellowship
Church, 120 USPQ2d at 1647. As there is no de minimis test for the “use in
commerce” requirement to register a mark, we fail to see how there could be such a
test for the “use” requirement to defeat an abandonment claim.17 Therefore, contrary
to the line of cases Petitioner cites in its brief, where abandonment was found when
sales were “de minimis,” “minimal” or “inconsequential,”18 we find that the sale of two
ADD A ZERO shirts in three years constitutes sufficient use to defeat Petitioner’s
claim of abandonment.
As for ADD A ZERO caps, it is true that Respondent sold none during this four-
year period. However, to the extent Petitioner has established a prima facie case of
abandonment as to caps, we find that Respondent has rebutted such prima facie case,
because any nonuse by Respondent of ADD A ZERO on caps which occurred in 2008
is excusable nonuse, due to the temporary closure of the bookstore for remodeling
that year. Cf. Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1775 n.9 (TTAB
1994) (suggesting that “an interrupted use due to special circumstances, with no
intent to abandon” constitutes excusable nonuse sufficient to overcome any inference
of abandonment). We also are mindful that where a three-year statutory period of

17 Section 45 of the Trademark Act uses the term “use” rather than “use in commerce” when
defining “abandonment of a mark.” However, Section 45 defines “[t]he term ‘mark’ [to]
include[s] any trademark …,” and it defines “[t]he term ‘trademark’ as “any word, name,
symbol, or device, or any combination thereof -- … (2) which a person has a bona fide intention
to use in commerce and applies to register on the principal register established by this
chapter” (emphasis added).
18 58 TTABVUE 25-26.
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nonuse of a mark is established, the Board may consider evidence and testimony
regarding a defendant’s practices that occurred before or after the three-year
statutory period to infer the defendant’s intent to resume use during the nonuse
period. Crash Dummy Movie LLC v. Mattel Inc., 601 F.3d 1387, 94 USPQ2d 1315,
1317 (Fed. Cir. 2010). To this end, we note that sales of ADD A ZERO caps and shirts
increased noticeably starting in December 2010, when Respondent launched its
online bookstore.19 Accordingly, we find that Respondent has rebutted any prima
facie case of abandonment as to caps.20

19 36 TTABVUE 484-492.
20 We would be remiss if we did not mention the declaration of Petitioner’s investigator Edgar
Bridges, and his attached report, which were submitted by Petitioner with its summary
judgment motion (18 TTABVUE and 19 TTABVUE (confidential) respectively) and again at
trial as exhibits to Mr. Bridge’s trial testimony deposition (34 TTABVUE). Respondent
objects to this evidence on admissibility and relevance grounds (61 TTABVUE 25-32).
Mr. Bridges testified, and his earlier declaration and report attest, to his two unsuccessful
attempts in May 2010 to buy ADD A ZERO shirts and caps from Respondent by phone, during
which he was told by two individuals, Ora Brown and LaBella (no last name provided), that
Respondent had not used the ADD A ZERO mark for years (34 TTABVUE 15, 18-21, 34-36
(testimony); 34 TTABVUE 53, 56 (report); 34 TTABVUE 61, 62-63 ¶¶ 5-6 (declaration)).
Even if we were to overrule Respondent’s objections, consideration of this evidence would not
change our decision. First, in its response to Interrogatory No. 32, Respondent has denied
that any “person having the name ‘LaBella’ has ever worked for Respondent.” 36 TTABVUE
290. Second, as Mr. Mason explained, Ms. Brown is an administrative assistant who
occasionally works in the bookstore when the regular bookstore staff is not available. (50
TTABVUE 12). Although Petitioner points to Ms. Brown’s statement to Mr. Bridges as
evidence of Respondent’s abandonment of the marks (“Any use of the trademarks at issue
after 2006 was so minimal and inconsequential that Respondent’s own employees were
unaware of it.” 58 TTABVUE 23), the basis for her statement is unclear, and she simply could
be wrong.
Petitioner has the burden of proving its abandonment claim by a preponderance of the
evidence, yet Petitioner did not call Ms. Brown (or any bookstore staff) as a witness,
preferring instead to rely on the investigator’s report as if it were conclusive. We simply do
not view Mr. Bridges’ testimony, and his earlier declaration and report, as persuasive
evidence of Respondent’s abandonment of ADD A ZERO on shirts and caps.
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In view thereof, Petitioner’s claim of abandonment is dismissed with prejudice as
to both caps and shirts.
III. Failure to Function as Trademarks
Section 45 of the Trademark Act, 15 U.S.C. § 1127 defines a “trademark” in
relevant part as “any word, name, symbol, or device, or any combination thereof – (1)
used by a person … to identify and distinguish his or her goods … from those
manufactured or sold by others and to indicate the source of the goods, even if that
source is unknown.”
It is well-settled that not every designation that is placed or used on a product
necessarily functions as a trademark and not every designation adopted with the
intention that it perform a trademark function necessarily does so. See In re Bose
Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976) (“The Trademark Act is not an
act to register mere words, but rather to register trademarks. Before there can be
registration, there must be a trademark, and unless words have been so used they
cannot qualify.”). Following this precept, the Board has affirmed refusals to register
slogans and composite word and design marks that convey information but which do
not function as marks. See, e.g., D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d
1710, 1716 (TTAB 2016) (finding that I ♥ DC does not create the commercial
impression of a source indicator because it would be perceived as informational); In
re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459-60 (TTAB 1998) (refusal to
register DRIVE SAFELY affirmed because phrase would not be regarded as indicator
of source but as a familiar safety admonition).
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Likewise, slogans and other terms that express support, admiration, or affiliation
are generally not registrable. See, e.g., In re Hulting, 107 USPQ2d 1175, 1177 (TTAB
2013) (finding “No More RINOs” is a political slogan of the conservative wing of the
Republican Party and not registrable as a trademark for bumper stickers, t-shirts,
and political pins); In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB 2010)
(“ONCE A MARINE, ALWAYS A MARINE is an old and familiar Marine expression,
and as such it is the type of expression that should remain free for all to use.”); In re
Manco Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (refusals to register THINK GREEN
and THINK GREEN and design affirmed because they would be regarded as “slogan
of environmental awareness and/or ecological consciousness, rather than be regarded
as indicators of source for weather stripping and paper products.”).
“The more commonly a phrase is used, the less likely that the public will use it to
identify only one source and the less likely that it will be recognized by purchasers as
a trademark.” Eagle Crest, 96 USPQ2d at 1229 (citation omitted).
In determining whether a designation functions as a mark, the critical inquiry is
how the relevant public would perceive the designation. Id. at 1229. To make this
determination, we look to specimens and other evidence of record showing how the
designation actually is used in the marketplace. D.C. One Wholesaler, 120 USPQ2d
at 1713 (citing Eagle Crest, 96 USPQ2d at 1229-30). See Bose, 192 USPQ at 216
(“[T]he manner in which an applicant has employed the asserted mark, as evidenced
by the specimens of record, must be carefully considered in determining whether the
asserted mark has been used as a trademark with respect to the goods named in
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the application.”) (emphasis in original). Thus, the determinative factor as far as
registrability is concerned is the manner in which the mark actually is used. Michael
S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1135 (TTAB 2000).
Petitioner argues that “add a zero” is a commonly used fundraising slogan, that
Respondent used “add a zero” “as an informational message to encourage its members
to contribute monies to Respondent’s building fund,”21 and that the relevant public,
consisting of Respondent’s congregants and their families, who view the slogan on the
shirts and caps identified in the registrations would understand it as such, rather
than as a trademark identifying the source of Respondent’s goods. The following
testimony from Mr. Mason, in particular, supports Petitioner’s position:
Q. Was Add A Zero used in conjunction with fund-raising?
Mr.
Young
Objection, it’s been asked and answered.
A. Yes.
Q. To raise revenues for the building fund?
A. Yes.
Q. How was Add A Zero used in connection with fund-raising?
Mr.
Young
Objection, it’s been asked and answered now multiple times.
A. That the proceeds would go toward paying off the debt of the church.
Q. Other than placing the name on shirts and hats, was Add A Zero used in
connection with fund-raising in any other way?
A. No, not that I can recall.22

***

Q. Was any explanation ever given to the congregation of why the CFFC was
using the words Add a Zero?
A. Yes.
Q. Okay. How were those explanations provided?

21 58 TTABVUE 33.
22 36 TTABVUE 418-419.
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A. The senior pastor made the announcement to the congregation in regard to
how it was being used from the prophetic word that was spoken by the
traveling evangelist back in 2004 I believe it was.
Q. Can you tell us as best you can what was said to the congregation?
A. That based on a prophetic word that God is adding a zero to the income of
the church, that in support of paying off the land of the church and the
building at that time, that the apparel would be sold – the Add A Zero
apparel would be sold, and all proceeds would go toward the building fund –
into the building fund account.23

***

Q. What, if anything, does the Add a Zero name have to do with the Brick and
Mortar Building Fund Drive?
A. I believe with the prophetic word that was spoken of the church that it also
stated that there would be an increase in expenses, but God was also going
to add to the income of the church and also to the senior pastors personally.
So then in regard to the Add a Zero, being that’s where the word derived
from, the Add A Zero is adding a zero to the income and adding a zero to the
expenses. So in regard to the campaign, the proceeds would be used to pay
off that debt.24

***

Q. Do you have an understanding as to why people are buying the product that
has the Add A Zero trademark on it?
A. For one, it’s pretty fashionable, I think, and, two, in support of the building
campaign of the church.25

Petitioner also has made of record a number of news articles, webpages, and blog
posts showing that the slogan “add a zero” has been widely used by others in
connection with fundraising. Illustrative examples follow (emphasis added).
• The Maharishi Vedic Prevention Center of Hamden, Connecticut webpage
discusses a “small fundraising event” that the Center hosted in connection with

23 36 TTABVUE 420-421.
24 36 TTABVUE 422-423.
25 36 TTABVUE 433.
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“The ‘Add a Zero’ Campaign, where “donors were encouraged to think of what
they could give comfortably but significantly … and then add a zero to the
end of that amount. One participant jumped in and extolled the benefits of
adding a zero. He explained how he had done this in the past and how it had
always worked in his favor.”26
• The Three Dollar Bill Cinema webpage advertises an event titled “Our
Community, In Focus: $15 for 15,” where “[w]e are asking for your support to
help us continue to bring the LGBT community together to showcase our
stories and harness the power of film to create change. In recognition of the
15th year of The Seattle Lesbian and Gay Film Festival, please consider
making a donation of $15. Add a zero to make a donation of $150 or
considering pledging $15 a month.”27
• An April 16, 2000 article from THE SUNDAY ADVOCATE (BATON ROUGE,
LOUISIANA) titled A Tournament for Kid’s Sake reports a fundraising event for
St. Jude’s Children’s Research Hospital, and the ability of “renowned bass pro
and ESPN fishing-host Jimmy Houston” to help raise money at an upcoming
tournament: “Somehow, Houston exacts a little more from pockets when it
comes to raffles and auctions. He has a knack for opening pocketbooks or
getting somebody to add a zero to a figure on a check.”28

26 36 TTABVUE 662 http://www.vedichealth-ct.org/contributors/donate.htm accessed
September 10, 2013.
27 36 TTABVUE 681 https://www.threedollarbillcinema.org/calendar/15-for-15/ accessed
September 14, 2013.
28 36 TTABVUE 590 at 591.
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• A May 22, 2004 article from the SAINT PAUL PIONEER PRESS (MINNESOTA) titled
Wetterling Wins Nod of DFL at Convention reports the endorsement of political
candidate Patty Wetterling and her fundraising efforts: “On Friday night,
Duluth Mayor Herb Bergson welcomed delegates to ‘Patty’s army’ and urged
them – and all of more than 2,000 delegates to the convention – to think about
how much they could afford to give Wetterling’s campaign, add a zero and
send in their checks.”29
• A July 20, 2008 article from the SACRAMENTO BEE (CALIFORNIA) titled New
Moon still shines; A decade since our last visit, this Nevada City restaurant
remains a sliver of heaven, discusses a note on a restaurant bill, which says
“[a]t the risk of being presumptuous, we added $1 to your bill to protect the
spacious lands and emerald rivers in the northern Sierra foothills. If you object,
we’ll cheerfully deduct the amount. Simply cross it out … .” “Some do, but some
also add a zero to boost the donation to $10, says manager Buzz Crouch.”30
• A May 3, 2009 article from THE SEATTLE TIMES titled SIFF returns for 35th year
with some new venues discusses the Seattle International Film Festival (SIFF),
and mentions its membership program: “Throughout the festival, SIFF will
promote membership in the 35 club, a fundraising program … Members who
contribute $35 (or more, with special encouragement to ‘add a zero’ to $350 or
$3,500) will receive special recognition … at the Film Center.”

29 36 TTABVUE 601 at 602.
30 36 TTABVUE 614 at 617.
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• A December 13, 2011 column by reporter John Kelly in the
washingtonpost.com titled Getting the word out about scam artists concludes
with a fundraising pitch: “It’s the season for giving, and I hope you won’t forget
to give to Children’s National Medical Center this year. How much? How about
adding the ages of all your children together and making out a check in that
amount? Add a zero if you can afford it.”31
• A May 17, 2013 blog post by “Christopher” on the United Way of Stanislaus
County website titled How To Be Courageous When Giving To Charity lists
“four ways to give more courageously,” including “[p]art of giving courageously
means giving courageously in the amount that you donate. Perhaps you want
to add a zero to the end of your normal donation – that is an act of courage.”32
Respondent argues that Petitioner’s evidence is inapposite because none of the
stories show use of the wording “add a zero” on clothing. We acknowledge that none
of the stories show use of the slogan on clothing, but such use is not necessary to
demonstrate that “add a zero” is an informational phrase in the nature of a slogan,
and would be understood as such by the relevant purchasing public. In this case, Mr.
Mason’s testimony makes it clear that Respondent uses the phrase “add a zero” in
the same manner as nearly all of the third parties featured in the stories Petitioner
made of record – to raise money for a particular cause – and that members of the
Church and their families would understand the slogan in that manner. The phrase

31 36 TTABVUE 631 at 633.
32 36 TTABVUE 670 at 671. http://www.uwaystan.org/blog-entry/17-05-2013/how-be-
courageous-when-giving-charity accessed September 10, 2013.
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“add a zero” is not somehow transformed into a trademark simply because
Respondent sells shirts and caps imprinted with that phrase as part of a fundraising
effort for the Church.33
Respondent also contends that Petitioner “has submitted no evidence of how the
relevant public perceives the ADD A ZERO Marks as used by the Church” (emphasis
in original),34 suggesting that Petitioner’s evidence is deficient because Petitioner did
not conduct a survey or speak to any Church members or their families. We disagree.
For the reasons discussed below, we find Petitioner’s evidence sufficient to establish
that the slogan “add a zero” is informational and would be understood as such by the
relevant public.
The function of a trademark is to identify a single commercial source. The record
before us establishes that the slogan “add a zero” has been widely used over a long
period of time by various groups and organizations as an expression of enthusiasm
and support for their particular fundraising events or causes. Because consumers are
accustomed to seeing “add a zero” as a fundraising slogan used by many different
groups, we find that the relevant public, Respondent’s congregants and their families,
would not view the slogan as a trademark indicating that Respondent is the sole
source of caps and shirts bearing the mark. We further find that most, if not all, of
the members of the relevant public have purchased and will continue to purchase

33 Also contrary to Respondent’s position in its brief (60 TTABVUE 19, n.8), Respondent’s use
of the TM notation (on the shirts and caps) in and of itself does not make an otherwise
unregistrable term a trademark. Volvo Cars, 46 USPQ2d at 1461.
34 60 TTABVUE 19.
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caps and shirts bearing the slogan because it conveys a message of financial support
for the Church. See Eagle Crest, 96 USPQ2d at 1232 (holding the primary function of
slogan ONCE A MARINE, ALWAYS A MARINE is to express support, admiration or
affiliation with the U.S. Marines). See also D.C. One Wholesaler, 120 USPQ2d at 1716
(“Because the nature of the phrase [I ♥ DC] will be perceived as informational, and
also because the ubiquity of the phrase … on apparel and other souvenirs of many
makers has given it a significance as an expression of enthusiasm, it does not create
the commercial impression of a source indicator, even when displayed on a hangtag
or label.”). Respondent is not entitled to exclusively appropriate the slogan to itself
and thereby attempt to prevent competitors from using it to promote the sale of their
own caps and shirts. It has been noted that “as a matter of competitive policy, it
should be close to impossible for one competitor to achieve exclusive rights” in
common phrases or slogans. 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 7:23 (5th ed. September 2019).
Here, the primary purpose of the slogan “add a zero,” as shown by the evidence of
use by the public and Respondent, is to convey information, that is, to convey
enthusiasm and support for a particular fundraising cause including the fundraising
activities of Respondent.
Based on the record evidence, we find that the wording “add a zero” is an
informational slogan that would not be perceived as a trademark to identify and
distinguish Respondent’s goods from the like goods of others. See Manco, 24 USPQ2d
at 1941 (THINK GREEN and THINK GREEN and design not registrable because
Cancellation No. 92053314
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they would be regarded as “slogan of environmental awareness and/or ecological
consciousness, rather than be regarded as indicators of source for weather stripping
and paper products.”). Accordingly, we grant the petition to cancel Registration No.
3173207 for ADD A ZERO in standard characters.
However, cancellation of Registration No. 3173208 for ADD A ZERO in special
form with design, displayed as
is not appropriate. Notwithstanding the
informational nature of the wording, the specific combination, placement and shading
of the wording and design elements of this special form mark create an integrated
whole with a single and distinct three-dimensional commercial impression; that is,
the mark is unitary. Compare Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21
USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN FORMULA and design not
unitary because the “elements are not so merged together that they cannot be
regarded as separate” and the proximity of the words to the design feature “does not
endow the whole with a single, integrated, and distinct commercial impression.”). See
In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (noting that “if the
elements are so merged together that they cannot be regarded as separable elements,
the mark is a single unitary mark”).
Cancellation No. 92053314
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Decision: The petition to cancel Respondent’s Registration No. 3173207 for ADD
A ZERO in standard characters and Registration No. 3173208 for ADD A ZERO in
special form with design, displayed as , is dismissed on the ground of
abandonment.
The petition to cancel the registrations on the ground of failure to function is
granted as to Registration No. 3173207 and denied as to Registration No. 3173208.
Registration No. 3173207 will be cancelled in due course.