Christian Faith Fellowship Church v. Adidas AG

United States Court of Appeals
for the Federal Circuit
______________________
CHRISTIAN FAITH FELLOWSHIP CHURCH,
Appellant
v.
ADIDAS AG,
Appellee
______________________
2016-1296
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
92053314.
______________________
Decided: November 14, 2016
______________________
RICHARD W. YOUNG, Quarles & Brady, LLP, Chicago,
IL, argued for appellant.
JOHN ZACCARIA, Notaro, Michalos & Zaccaria P.C.,
Orangeburg, NY, argued for appellee. Also represented by
BRADLEY S. CORSELLO, ANGELO NOTARO.
______________________
Before REYNA, HUGHES, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
2 CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG
Christian Faith Fellowship Church appeals a final
judgment of the Trademark Trial and Appeal Board that,
in response to a petition filed by adidas AG, cancelled its
trademarks for failing to use the marks in commerce
before registering them. The Board held that the
Church’s documented sale of two marked hats to an out-
of-state resident were de minimis and therefore did not
constitute use of the marks in commerce under the Lan-
ham Act. Because the Lanham Act defines commerce as
all activity regulable by Congress, and because the
Church’s sale to an out-of-state resident fell within Con-
gress’s power to regulate under the Commerce Clause, we
reverse the Board’s cancellation of the Church’s marks on
this basis and remand for further proceedings.
BACKGROUND
I.
Christian Faith Fellowship Church is located in Zion,
Illinois, within five miles of the Illinois–Wisconsin border.
Being located so close to the border, the Church’s parish-
ioners include both Illinois and Wisconsin residents. In
January 2005, the Church began selling apparel, both
caps and shirts, emblazoned with the phrase “ADD A
ZERO.” The Church sold the “ADD A ZERO”-marked
apparel as part of a fundraising campaign to pay off the
debt on its church facility and the associated 40-acre tract
of land. Illinois-based Icon Industries supplied the
Church with the “ADD A ZERO”-marked apparel, which
the Church sold in its bookstore. 1
1 The Church also presented evidence to the Board
that it began offering the “ADD A ZERO”-marked apparel
for sale on its website in 2010. Like the Board, we do not
consider this evidence because it concerns activity after
the critical trademark registration date of March 2005.
See Couture v. Playdom, Inc., 778 F.3d 1379, 1381
CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG 3
The Church sought a federal trademark for the “ADD
A ZERO” mark at the U.S. Patent and Trademark Office
in March 2005. The Church filed two clothing-based
trademark applications, one for use of “ADD A ZERO” in
standard characters and another for a stylized design of
the phrase. The Church’s applications relied on actual
use of the marks in commerce, not intent to use the marks
in commerce. The Office granted the Church’s applica-
tions and registered the marks as U.S. Registration Nos.
3,173,207 and 3,173,208.
II.
In 2009, adidas AG (“Adidas”) sought a clothing
trademark for the phrase “ADIZERO,” but the Office
refused the application for likelihood of confusion with the
Church’s “ADD A ZERO” marks. Adidas brought an
action before the Trademark Trial and Appeal Board to
cancel the Church’s marks, arguing several grounds for
cancellation: (1) the Church’s failure to use the marks in
commerce before registration; (2) the marks’ failure to
function as trademarks; and (3) the Church’s abandon-
ment of the marks for nonuse. The Board agreed with
Adidas’s failure-to-use argument and cancelled the
Church’s marks, without addressing Adidas’s alternate
cancellation grounds. The Board considered the Church’s
proffered evidence—over Adidas’s hearsay and authenti-
cation objections—of a cancelled check for the sale of two
“ADD A ZERO”-marked hats for $38.34 in February 2005,
before the Church applied for its marks. The Church had
kept the check in its records and cross-referenced it with a
sales register it maintained for its bookstore. The check’s
drawer was Charlotte Howard, who had a Wisconsin
home address pre-printed on her check.
(Fed. Cir.), cert. denied, 136 S. Ct. 88 (2015) (“Use in
commerce must be ‘as of the application filing date.’”
(quoting 37 C.F.R. § 2.34(a)(1)(i))).
4 CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG
The Board disagreed with the Church that the sale to
Ms. Howard evidenced the requisite “use in commerce”
under the Lanham Act. The Board concluded:
[T]he sale of two ADD A ZERO caps at a minimal
cost within the state of Illinois to Ms. Howard,
who resides outside the state, does not affect
commerce that Congress can regulate such that
the transaction would constitute use in commerce
for purposes of registration.
. . . This sale is de minimis and, under the cir-
cumstances shown here, is insufficient to show
use that affects interstate commerce.
adidas AG v. Christian Faith Fellowship Church, Cancel-
lation No. 92053314, 2015 WL 5882313, at *7 (T.T.A.B.
Sept. 14, 2015) (Board Op.) (footnote omitted).
The Church appeals, and we have jurisdiction under
28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
The Lanham Act provides that “[t]he owner of a
trademark used in commerce may request registration of
its trademark.” 15 U.S.C. § 1051(a)(1) (emphasis added).
Section 1051(a)’s “use in commerce” requirement distin-
guishes it from § 1051(b), which offers protection for “[a]
person who has a bona fide intention, under circumstanc-
es showing the good faith of such person, to use a trade-
mark in commerce.” Id. § 1051(b). The Lanham Act
explains the “use in commerce” requirement as it relates
to goods:
The term “use in commerce” means the bona
fide use of a mark in the ordinary course of trade,
and not made merely to reserve a right in a mark.
For purposes of this chapter, a mark shall be
deemed to be in use in commerce—
(1) on goods when—
CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG 5
(A) it is placed in any manner on the
goods or their containers or the displays
associated therewith or on the tags or la-
bels affixed thereto, or if the nature of the
goods makes such placement impractica-
ble, then on documents associated with
the goods or their sale, and
(B) the goods are sold or transported
in commerce . . . .
Id. § 1127 (emphases added). Further, the Lanham Act
defines “commerce” as “all commerce which may lawfully
be regulated by Congress.” Id. Thus, to register a mark
under § 1051(a), one must sell or transport goods bearing
the mark such that the sale or transport would be subject
to Congress’s power under the Commerce Clause, which
includes its power to regulate interstate commerce. Larry
Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d
662, 664 (Fed. Cir. 1991) (citing U.S. Const., art. I, § 8);
see also In re Silenus Wines, Inc., 557 F.2d 806, 808–12
(CCPA 1977).
The dispute between the parties in this case is limited
to whether the Church, which filed its applications under
§ 1051(a)’s “use in commerce” subsection, made a sale of
marked goods in commerce regulable by Congress before
applying for its marks.
I.
As a threshold matter, we address whether the Board
erred in admitting Ms. Howard’s check into evidence and
in finding that Ms. Howard resided in Wisconsin. Adidas
argues that the Board should not have admitted the check
because Ms. Howard’s pre-printed address on the check
constitutes inadmissible hearsay and because the check
was not authenticated. We review the Board’s admission
of the check for abuse of discretion. Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 1363 (Fed. Cir.
6 CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG
2012) (citing Crash Dummy Movie, LLC v. Mattel, Inc.,
601 F.3d 1387, 1390 (Fed. Cir. 2010)). “We will reverse
only if the Board’s evidentiary ruling was: (1) ‘clearly
unreasonable, arbitrary, or fanciful’; (2) ‘based on an
erroneous conclusion[] of law’; (3) premised on ‘clearly
erroneous findings of fact’; or (4) the record ‘contains no
evidence on which the Board could rationally base its
decision.’” Id. (quoting Crash Dummy Movie, 601 F.3d at
1390–91).
No party disputes that Ms. Howard’s pre-printed ad-
dress on the check is a hearsay statement, which is typi-
cally not admissible into evidence. The Federal Rules of
Evidence provide, however, an exception to the bar on
hearsay evidence for business records of regularly con-
ducted conduct kept in the ordinary course. Fed. R.
Evid. 803(6). The Board relied on this exception in admit-
ting Ms. Howard’s check. A Church pastor, whose duties
included Church recordkeeping, testified that the check
was maintained in the Church’s records in the normal
course of Church bookstore sales, along with the corrobo-
rating entry in the bookstore ledger of sales. Adidas
argues that the pre-printed address on the check had
nothing to do with Church business, and therefore, the
check should not have been admissible under the business
records exception. We disagree.
The business records exception “does not require that
the document actually be prepared by the business entity
proffering the document.” Air Land Forwarders, Inc. v.
United States, 172 F.3d 1338, 1343 (Fed. Cir. 1999).
When a business relies on a document it has not itself
prepared, two factors bear on the admissibility of the
evidence as a business record: “[1] that the incorporating
business rely upon the accuracy of the document incorpo-
rated[;] and [2] that there are other circumstances indi-
cating the trustworthiness of the document.” Id. We hold
that the Board did not abuse its discretion in determining
that the Church relied on the check, a bank-issued nego-
CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG 7
tiable instrument, as accurate and trustworthy. We also
hold that the check is self-authenticating as commercial
paper under Federal Rule of Evidence 902(9). See United
States v. Pang, 362 F.3d 1187, 1192 (9th Cir. 2004) (“[A]
check is a species of commercial paper, and therefore self-
authenticating” (citing Fed. R. Evid. 902(9))).
Based on the admitted check and a Church pastor’s
testimony that many Church parishioners reside in
Wisconsin, the Board found that Ms. Howard resided in
Wisconsin. Adidas argues this factual conclusion was
unsupported. We review the Board’s factual determina-
tions under a substantial evidence standard. In re Chip-
pendales USA, Inc., 622 F.3d 1346, 1350 (Fed. Cir. 2010)
(citing In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir.
2003); 5 U.S.C. § 706(2)(E)). We conclude that the admit-
ted check and the Church pastor’s testimony constitute
substantial evidence to support the Board’s determination
regarding Ms. Howard’s residence.
II.
Having resolved that the Board properly admitted the
Church’s evidence of an intrastate sale to an out-of-state
resident, we now consider whether such a sale is regula-
ble by Congress, satisfying the Lanham Act § 1051(a) “use
in commerce” requirement. We review de novo the
Board’s legal conclusions, including “its interpretations of
the Lanham Act and the legal tests it applies in measur-
ing registrability.” In re Viterra Inc., 671 F.3d 1358, 1361
(Fed. Cir. 2012) (quoting In re Save Venice N.Y., Inc., 259
F.3d 1346, 1351–52 (Fed. Cir. 2001)); cf. Taylor v. United
States, 136 S. Ct. 2074, 2080 (2016) (holding the meaning
of “commerce” element in a different federal statute, the
Hobbs Act, to be a question of law).
A.
Congress’s power under the Commerce Clause is
broad. Larry Harmon, 929 F.2d at 664 (citing Silenus
8 CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG
Wines, 557 F.2d at 809–10). The Supreme Court’s con-
temporary Commerce Clause decisions illustrate Con-
gress’s legislative abilities under this enumerated power.
Beginning in the modern era with Wickard v. Filburn, the
Supreme Court has interpreted the Commerce Clause as
vesting in Congress the power to regulate activities that
have a substantial effect on interstate commerce, explain-
ing:
[E]ven if . . . activity be local and though it may
not be regarded as commerce, it may still, what-
ever its nature, be reached by Congress if it exerts
a substantial economic effect on interstate com-
merce and this irrespective of whether such effect
is what might at some earlier time have been de-
fined as “direct” or “indirect.”
317 U.S. 111, 125 (1942). In Wickard, a farmer grew
wheat for commercial sale, but also for personal and farm
use. Id. at 114. Congress passed a statute imposing
quotas on the amount of wheat that farmers could har-
vest, with penalties assessed for harvesting wheat in
excess of the quota level, even if the wheat was for per-
sonal use and not for sale. Id. at 114–15, 119. The
farmer challenged the statute’s application to him as
exceeding Congress’s Commerce Clause powers, claiming
his wheat harvesting was local in nature and had, at
most, only an indirect effect on interstate commerce. Id.
at 119. The Court disagreed with the farmer’s argu-
ments, holding that the activity must be viewed not in
isolation, but in the aggregate: “That [the farmer’s] own
contribution to the demand for wheat may be trivial by
itself is not enough to remove him from the scope of
federal regulation where, as here, his contribution, taken
together with that of many others similarly situated, is
far from trivial.” Id. at 127–28.
The Supreme Court reaffirmed Wickard’s “substantial
effects” doctrine in Gonzales v. Raich, in which one of the
CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG 9
parties grew marijuana on her property for personal,
medicinal use and did not sell or transport the drug. 545
U.S. 1, 6–8 (2005). She argued that her local and de
minimis cultivation and possession of marijuana should
not be subject to federal drug laws passed under the
Commerce Clause. Id. at 15. The Supreme Court framed
her argument as a request to “excise individual applica-
tions of a concededly valid statutory scheme.” Id. at 23.
But the Supreme Court held the statute’s application to
individuals was a valid exercise of Congress’s powers
under the Commerce Clause, indicating that its “case law
firmly establishes Congress’s power to regulate purely
local activities that are part of an economic ‘class of
activities’ that have a substantial effect on interstate
commerce.” Id. at 17 (citing Perez v. United States, 402
U.S. 146, 151 (1971); Wickard, 317 U.S. at 128–29). The
Court did not believe that the case turned on the intra-
state nature of the marijuana cultivation and possession
at issue, explaining “[t]hat the regulation ensnares some
purely intrastate activity is of no moment.” Id. at 22. The
Court “refuse[d] to excise individual components of th[e]
larger scheme,” id., because, “where the class of activities
is regulated and that class is within the reach of federal
power, the courts have no power ‘to excise, as trivial,
individual instances’ of the class,” id. at 23 (quoting Perez,
402 U.S. at 154 (alteration omitted)). Thus, the Court
held that when “a general regulatory statute bears a
substantial relation to commerce, the de minimis charac-
ter of individual instances arising under that statute is of
no consequence” and Congress has the power to regulate
it under the Commerce Clause. Id. at 17 (quoting United
States v. Lopez, 514 U.S. 549, 558 (1995)).
The Supreme Court most recently addressed the
Commerce Clause’s “substantial effects” doctrine in
Taylor, which involved a man federally convicted of
robbery under a provision of the Hobbs Act for his partici-
pation in two home invasions involving marijuana deal-
10 CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG
ers. 136 S. Ct. at 2077–78 (citing 18 U.S.C. § 1951(a)).
The Hobbs Act criminalizes robberies and attempted
robberies that affect any commerce “over which the Unit-
ed States has jurisdiction.” Id. at 2077 (quoting 18 U.S.C.
§ 1951(b)(3)). Citing Raich, the Court held that Congress
legislated within its Commerce Clause powers when
enacting the provision at issue. Id. at 2077–78, 2080. As
applied, the Court reiterated that, under the aggregation
approach to the substantial effects test, “proof that the
defendant’s conduct in and of itself affected or threatened
commerce is not needed.” Id. at 2081. Rather, the Court
instructed that “[a]ll that is needed is proof that the
defendant’s conduct fell within a category of conduct that,
in the aggregate, had the requisite effect” on commerce.
Id. The Court emphasized that, in the case before it, “the
Government need not show that the drugs that a defend-
ant stole or attempted to steal either traveled or were
destined for transport across state lines. . . . And it makes
no difference under our cases that any actual or threat-
ened effect on commerce in a particular case is minimal.”
Id. (citing Perez, 402 U.S. at 154).
B.
Our past Lanham Act “use in commerce” cases equally
reflect the broad scope of Congress’s Commerce Clause
powers. For example, in Larry Harmon, the appellant
argued that the Lanham Act’s “use in commerce” re-
quirement could not “be satisfied by a single-location
restaurant . . . that serves only a minimal number of
interstate travelers.” 929 F.2d at 663. The appellant did
not dispute “that there ha[d] been some use in commerce
of [registrant]’s mark,” and indeed, the record established
that the “mark ha[d] been used in connection with ser-
vices rendered to customers traveling across state bound-
aries.” Id. at 666. Yet, the appellant petitioned this court
to adopt a standard relating to the percentage of services
furnished to interstate travelers to determine whether a
mark had been used in commerce under the Lanham Act.
CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG 11
Id. We refused to do so. Recognizing that “[t]he Lanham
Act by its terms extends to all commerce which Congress
may regulate,” id., and that “Congress has broad powers
under the commerce clause,” id. at 664, we “reject[ed]
[appellant]’s argument that a certain increased threshold
level of interstate activity is required before registration
of the mark used by a single-location restaurant may be
granted,” id. at 666. Likewise, our predecessor court
explained in Silenus Wines that because Congress passed
the Lanham Act in the wake of Wickard and because the
Act expansively defines commerce as “all commerce which
may lawfully be regulated by Congress,” it “clearly in-
volves a broadening of jurisdiction” from earlier federal
trademark statutes. 557 F.2d at 809–10. The court held
that, under this broad jurisdiction, the intrastate sale of
imported French wine constitutes “use in commerce”
under the Act. Id. at 809.
C.
Moving to the facts of this case, it is clear in light of
the foregoing precedent that the Church’s sale of two
“ADD A ZERO”-marked hats to an out-of-state resident is
regulable by Congress under the Commerce Clause and,
therefore, constitutes “use in commerce” under the Lan-
ham Act. We reach this conclusion without defining the
outer contours of Congress’s Commerce Clause powers
because the transaction at issue falls comfortably within
the bounds of those powers already sketched for us by the
Supreme Court. The Lanham Act is a comprehensive
scheme for regulating economic activity—namely the
marking of commercial goods—and the “use in commerce”
pre-registration requirement is an “essential part” of the
Act. Lopez, 514 U.S. at 561. Further, it cannot be doubt-
ed that the transaction at issue—the private sale of goods,
particularly apparel, to an out-of-state resident—is “quin-
tessentially economic.” Raich, 545 U.S. at 25; see United
States v. Morrison, 529 U.S. 598, 611 (2000) (“[I]n those
cases where we have sustained federal regulation of
12 CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG
intrastate activity based upon the activity’s substantial
effects on interstate commerce, the activity in question
has been some sort of economic endeavor.”). This transac-
tion, taken in the aggregate, would cause a substantial
effect on interstate commerce and thus it falls under
Congress’s Commerce Clause powers. Taylor, 136 S. Ct.
at 2080–81; Raich, 545 U.S. at 17; Wickard, 317 U.S. at
125. The Church did not need to present evidence of an
actual and specific effect that its sale of hats to an out-of-
state resident had on interstate commerce. Nor did it
need to make a particularized showing that the hats
themselves were destined to travel out of state. See
Taylor, 136 S. Ct. at 2081.
The Board’s rationale that the sale to Ms. Howard
was “de minimis” and thus “insufficient to show use that
affects interstate commerce” is squarely at odds with the
Wickard progeny of Commerce Clause cases. Board Op.
at *7. In particular, the Board’s reasoning contravenes
Raich, which expressed that “the de minimis character of
individual instances” arising under a valid statute enact-
ed under the Commerce Clause “is of no consequence.”
545 U.S. at 17. “[I]t makes no difference under our cases
that any actual or threatened effect on commerce in a
particular case is minimal.” Taylor, 136 S. Ct. at 2081
(citing Perez, 402 U.S. at 154); see also Larry Harmon, 929
F.2d at 666. Adidas’s argument that the Church must
present actual proof that its sale to Ms. Howard directly
affected commerce also contradicts precedent. “[P]roof
that the defendant’s conduct in and of itself affected or
threatened commerce is not needed. All that is needed is
proof that the defendant’s conduct fell within a category of
conduct that, in the aggregate, had the requisite effect.”
Taylor, 136 S. Ct. at 2081.
Adidas would like us to cabin Raich and Taylor to
their particular facts, namely to cases involving the
market for illegal drugs. But the Supreme Court’s eluci-
dation of the Constitutional reach of the Commerce
CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG 13
Clause in those cases applies to more than just federal
drug regulation. Raich and Taylor apply, and indeed rest
on, principles derived from Wickard, which involved the
national market for wheat, not illegal drugs. And Taylor
is particularly applicable because, similar to the present
case, it involves the construction of a statutory provision
that defines “commerce” as including “all . . . commerce
over which the United States has jurisdiction,” 18 U.S.C.
§ 1951(b)(3). Moreover, there is nothing in these cases
themselves to limit the Constitutional precepts and legal
tests discussed therein to their facts. The Supreme Court
has advised that, as a court of appeals, we must not
“confus[e] the factual contours of [a Supreme Court deci-
sion] for its unmistakable holding” in an effort to reach a
“novel interpretation” of that decision. Thurston Motor
Lines, Inc. v. Jordan K. Rand, Ltd., 460 U.S. 533, 534–35
(1983) (per curiam); see also Rivers v. Roadway Express,
Inc., 511 U.S. 298, 312 (1994) (“[O]nce the Court has
spoken, it is the duty of other courts to respect that un-
derstanding of the governing rule of law.”); Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir.
2010) (en banc) (“As a subordinate federal court, we may
not so easily dismiss [the Supreme Court’s] statements as
dicta but are bound to follow them.”). We find that the
principles discussed in Raich and Taylor apply here
regardless of the factual differences at play.
D.
Finally, we note that the Board erred by not properly
applying our holdings in Larry Harmon and Silenus
Wines, which bear on the Lanham Act’s “use in commerce”
requirement specifically rather than on the Commerce
Clause in the abstract. Had it done so, it would not have
concluded that a sale it characterized as de minimis was
therefore insufficient to satisfy the “use in commerce”
requirement.
14 CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG
In Larry Harmon, we refused to adopt a de minimis
test for the “use in commerce” requirement. 929 F.2d at
666. We further held that the Lanham Act by its terms
extends to all commerce which Congress may regulate.
Id. Although Larry Harmon involved a service mark and
the marks here are for goods, the “in commerce” require-
ment is the same regardless of the type of mark and thus
Larry Harmon applies to this case. True enough, § 1127
provides distinct tests for the type of use that must occur
for goods versus services to satisfy the “use in commerce”
requirement. For example, the statute requires that
marked goods be “sold or transported” in commerce, while
service marks must be “used or displayed in the sale or
advertising of services and the services [must be] ren-
dered” in commerce. But this distinction goes to the
meaning of “use” in the “use in commerce” requirement,
not to whether a use is “in commerce,” which we analyze
under the same rubric regardless of the delineation be-
tween goods and services.
Our predecessor court made this very point in Silenus
Wines, 557 F.2d 806. In that case, the court rejected the
argument that an earlier decision, In re Gastown, Inc.,
326 F.2d 780 (CCPA 1964), was limited to service marks.
Silenus Wines, 557 F.2d at 808. Gastown held that an
applicant’s operation of marked auto service stations on
an interstate highway satisfied the “use in commerce”
requirement. Gastown, 326 F.2d at 784. Silenus Wines
explained that “Gastown’s rationale is not limited to
services” because its “result depended on the Trademark
Act definition of ‘commerce’” rather than on the Act’s
prescribed uses for service marks. Silenus Wines, 557
F.2d at 808.
The Board also erred to the extent it relied on In re
Cook, United, Inc., 188 U.S.P.Q. 284 (T.T.A.B. 1975), and
In re The Bagel Factory, Inc., 183 U.S.P.Q. 553 (T.T.A.B.
1974), for the proposition that an intrastate sale of goods
can never be a sale “in commerce” without the trademark
CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG 15
applicant doing something more, such as knowingly
directing the movement of goods across state lines. Cook,
188 U.S.P.Q. at 287–88; Bagel Factory, 183 U.S.P.Q. at
554–55. These Board cases have been the source of
confusion in our “use in commerce” doctrine. Doubt has
been cast on the vitality of the Bagel Factory holding,
with commentators noting that “under the modern inter-
pretations of the Commerce Clause . . . it would appear
that a sale or delivery does not have to cross a state line
in order to affect ‘commerce.’” 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition
§ 19:123 (4th ed.) (footnote omitted). Others have similar-
ly explained that, in Cook, “the PTO was operating under
a different standard” than the one provided in the Su-
preme Court’s Commerce Clause precedent and have
concluded that, especially after Larry Harmon, “not only
is the PTO’s perspective [as stated in Cook] no longer
appropriate nor correct, it is no longer the law.” Peter C.
Christensen & Teresa C. Tucker, The “Use in Commerce”
Requirement for Trademark Registration After Larry
Harmon Pictures, 32 IDEA 327, 332, 341 (1992).
To the extent Cook and Bagel Factory assert that the
Lanham Act requires commercial activity, whether for
goods or services, beyond that which is sufficient for
Congress to regulate commercial activity under the Com-
merce Clause, they are incorrect. It is beyond dispute
that “the definition of commerce in the Lanham Act
means exactly what the statute says, i.e. ‘all commerce
which may lawfully be regulated by Congress.’” Larry
Harmon, 929 F.2d at 666 (quoting 15 U.S.C. § 1127); see
also Gastown, 326 F.2d at 784 (quoting Bulova Watch Co.
v. Steele, 194 F.2d 567, 571 (5th Cir.), aff’d, 344 U.S. 280
(1952)); cf. Taylor, 136 S. Ct. at 2079 (construing provi-
sion of Hobbs Act—which defines “commerce” as including
“all . . . commerce over which the United States has
jurisdiction,” 18 U.S.C. § 1951(b)(3)—as extending to full
reach of Congress’s Commerce Clause powers). Because
16 CHRISTIAN FAITH FELLOWSHIP v. ADIDAS AG
one need not direct goods across state lines for Congress
to regulate the activity under the Commerce Clause, there
is likewise no such per se condition for satisfying the
Lanham Act’s “use in commerce” requirement. See Raich,
545 U.S. at 22 (“That the regulation [passed under the
Commerce Clause] ensnares some purely intrastate
activity is of no moment.”); Wickard, 317 U.S. at 125
(“[E]ven if . . . activity be local . . . it may still, whatever
its nature, be reached by Congress if it exerts a substan-
tial economic effect on interstate commerce . . . .”). In so
holding, we comport with our own precedent, which
disavows the bright line approach taken in Cook and
Bagel Factory. See Larry Harmon, 929 F.2d at 666 (“It is
not required that such services be rendered in more than
one state to satisfy the use in commerce requirement.”
(citing Gastown, 326 F.2d at 782–84)); Silenus Wines, 557
F.2d at 810–811 (“[The PTO] stated that ‘commerce’ did
not cover intrastate transactions regardless of affect on
interstate and foreign commerce. . . . We reject the PTO
position.”).
CONCLUSION
For the foregoing reasons, we reverse the Board’s
cancellation of the Church’s “ADD A ZERO” marks for not
using them in commerce before federally registering them
and remand for the Board to address Adidas’s other
cancellation grounds.
REVERSED AND REMANDED
COSTS
Costs to Appellant.