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Back in November 2016, this blog covered the case of the trademark, ADD A ZERO, for wearing apparel. The trademark is owned by Christian Faith Fellowship Church (“CFFC”). Adidas, the international sportswear powerhouse, sought to cancel CFFC’s trademark for various reasons. Adidas took on the cause because the USPTO refused registration of Adidas’s trademark, ADIZERO, due to a likelihood of confusion. Adidas argued that CFFC wasn’t using the trademark in commerce because CFFC only sold two items. The Federal Circuit Court of Appeals held that there is no ‘de minimis’ sale rule and so two sales were enough.
Not one to give up, Adidas continued to challenge CFFC’s trademark. Adidas complained that since the Federal Circuit ruling, CFFC is still only selling one or two items a year which isn’t enough for use in commerce. This argument was rejected, again.
Then Adidas asserted that the CFFC trademark didn’t function as a source or product identifier. Now before the Trademark Trial and Appeal Board (“Board”), Adidas argued that “Add A Zero” had been used by CFFC solely to inform its members of fundraising efforts. To support this argument, Adidas submitted numerous news articles, webpages and blog posts showing that many third parties used “add a zero” to denote their own fundraising efforts. The Board agreed that “the slogan ‘add a zero’ is informational and would be understood as such by the relevant public.” However, the Board did not cancel CFFC’s mark. The Board held that the design of the trademark was enough to transform the words from a slogan into a trademark. The Board reasoned, “[n]otwithstanding 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.”
WHY YOU SHOULD KNOW THIS. The “unitary mark” is a unique creature in the world of trademarks. The USPTO’s Trademark Manual of Examining Procedure says that a mark is “unitary” when “it creates a commercial impression separate and apart from any unregistrable component.” The test for unitariness asks whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable. The inseparable nature of the elements of the mark create an independent commercial impression. Creating a unitary mark may not be so easy. For example, just applying a different color or font to a phrase will not be enough. There has to be something else that creates a commercial impression. What’s the line between enough and not enough? An experienced trademark attorney can help with that analysis.