United States: A Tale Of Two Hats: Trademark "Use In Commerce" Expanded In A Potentially Game-Changing Decision

Last Updated: December 1 2016
Article by Joshua S. Jarvis

Our readers no doubt understand that trademark use is the basis for trademark protection in the U.S. But all use is not created equal, and sometimes it's not so easy to tell whether a trademark is actually used in a manner sufficient to qualify for federal trademark registration. A recent Federal Circuit decision promises to make this determination a little bit easier.

The U.S. Lanham Act and the Basics of Trademark Use

The question of whether a trademark is used to a sufficient degree to qualify for federal registration isn't as easy as it sounds. In the case of goods, a trademark is legally "used" when it is used in the ordinary course of trade and (a) placed on goods, or their containers, tags, or packaging, or a point of purchase display, and (b) the goods are sold or transported in commerce. See 15 U.S.C. § 1127. So, for instance, an advertisement on a website for your XYZ" brand gyros doesn't constitute use sufficient to support federal registration, but use of the XYZ" mark on a shipping box filled with gyros and shipped across state lines does the trick. The statutory standard has been applied differently to different types of goods and fact patterns, and use of a mark on services has a different standard entirely (use in advertising is sufficient for service marks), but suffice it to say that things can get complicated.

"Use in Commerce"

In order to register a trademark at the federal level, the Lanham Act requires that the mark be used "in commerce," that is, in commerce "which may lawfully be regulated by Congress." Traditionally, courts and the United States Patent and Trademark Office (USPTO) have interpreted this to mean that branded goods must be shipped across state lines (or imported from abroad), or that goods shipped thusly be sold in connection with a point-of-purchase display bearing the mark. In other words, purely intrastate trademark use, such as shipping a branded product to a customer in-state, historically has not qualified as "use in commerce" regulable by Congress, and is therefore insufficient to support a federal trademark registration.

There are, naturally, some situations where the interstate/intrastate question isn't as easy to answer. For instance, what if one is selling branded goods at a single location to an out-of-state customer? This is a particularly interesting question because it has long been accepted that a single-location restaurant with at least some out-of-state customers is providing restaurant services "in commerce" sufficient to support federal registration. See Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991). But the analogous question with the sale of branded goods — even at that same restaurant! — hadn't been authoritatively resolved before now.

A Tale of Two Hats

The U.S. Court of Appeals for the Federal Circuit recently answered this question with a resounding "yes" in Christian Faith Fellowship Church v. Adidas AG, No. 2016-1296 (Fed. Cir. 2016). Adidas brought a cancellation action with the USPTO Trademark Trial and Appeal Board (TTAB) against two registrations, for the marks ADD A ZERO and a corresponding logo, owned by the Christian Faith Fellowship Church. Adidas argued, among other things, that the marks were not used "in commerce" as of the applications' filing dates back in March 2005. Because the applications were based on use in commerce, failure to use the marks as of that date would render the resulting registrations void. The Church, which is located in Illinois, proffered evidence that, as of the 2005 filing date, two hats bearing the marks were sold within Illinois but to a customer hailing from Wisconsin. The TTAB, rejecting the Church's argument that the intrastate sale of branded goods to an out-of-state customer constituted "use in commerce" under the Lanham Act, granted the cancellation petition. The Church appealed.

Looking to contemporary U.S. Supreme Court decisions broadly interpreting the scope of the Commerce Clause to apply to local activities, starting with Wickard v. Filburn, 317 U.S. 111 (1942), and its own trademark decisions including Larry Harmon Pictures Corporation v. Williams Restaurant Corp., the Federal Circuit reversed, holding that the transaction in question, "taken in the aggregate, would cause a substantial effect on interstate commerce and thus it falls under Congress's Commerce Clause powers." Further, and overturning longstanding TTAB precedent, the Church was not required "to present evidence of an actual and specific effect that its sale of hats to an out-of-state resident had on interstate commerce," or even show that the hats were destined to travel out of state. Therefore, the mark was deemed to have been used "in commerce" for Lanham Act purposes, and the case was remanded to the TTAB to evaluate Adidas' other grounds for cancellation.

Is Everything Now "Use in Commerce"?

So it's clearly the case now that the sale of branded goods in the ordinary course of business to out-of-state customers constitutes "use in commerce" for the purposes of federal registration. But some are suggesting that the Federal Circuit goes much further — that it's not unreasonable to read the decision as effectively rendering all sales of branded goods — even purely local commerce where no out-of-state customers are known to be involved — use in commerce. Citing the Supreme Court's Commerce Clause decisions in Wickard (holding that local growth of wheat, even for personal use, could be regulated because similar activities taken in the aggregate could have a "substantial economic effect" on interstate commerce) and Gonzales v. Raich, 545 U.S. 1 (2005) (holding that Congress has Commerce Clause authority to criminalize the purely local production and use of homegrown cannabis irrespective of its legality under relevant state law), the Federal Circuit noted that "'the de minimis character of individual instances' arising under a valid statute enacted under the Commerce Clause 'is of no consequence.'" It therefore seems a reasonable possibility based on the court's application of Wickard and Raich that the same result would have been achieved in this case even absent the out-of-state purchaser element of the fact pattern, because even the intrastate use "taken in the aggregate," would affect interstate commerce enough to satisfy constitutional muster. The court favorably quoted Wickard:

[E]ven if . . . activity be local and though it may not be regarded as commerce, it may still, whatever its nature, be reached by Congress if it exerts a substantial economic effect on interstate commerce and this irrespective of whether such effect is what might at some earlier time have been defined as "direct" or indirect.

Id. at 125.

If this broad reading is accurate, then the decision marks something of a sea change for use sufficient to support federal registration. Nevertheless, caution is in order when filing a use-based federal application, or a Statement of Use, because it's difficult to say how the TTAB will apply this decision. In other words, I would want to be reasonably certain that there's active use with an interstate nexus at least as minimal — e.g., sales to a single out-of-state customer — as that presented here. At least until there's more guidance on the topic, it would be unfortunate to make filings based on a potentially overly broad reading of this decision and end up with a trademark registration being declared void ab initio.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
25 Oct 2017, Webinar, Boston, United States

Foley Hoag will present a 60-minute webinar on Wednesday, October 25 at 12:30 pm EDT, offering guidance for in-house counsel regarding the basics of trademark and design protection in the European Union. Attendees will learn about the opportunities and pitfalls to be on the lookout for when looking to secure, protect, and enforce an IP portfolio overseas.

1 Nov 2017, Webinar, Boston, United States

Please join Foley Hoag on Wednesday, November 1, 2017 for a webinar that covers the details of drafting an appropriate arbitration clause for your company’s commercial contracts.

9 Nov 2017, Conference, Waltham, United States

Please join us on Thursday, November 9 at the Westin Waltham Hotel for our quarterly New England M&A Forum, which brings the latest in market trends and recent legal developments to the New England M&A professionals' community.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.