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Church Asks NBA Star for Help in Defending Trademark Against Adidas

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Derrick Rose by Keith Allison on Flickr

Derrick Rose by Keith Allison on Flickr

The trademark struggle over Adidas’ adiZero line continues — and the church on the other side of the dispute is turning to NBA star Derrick Rose for help.

Adidas is having trouble trademarking “AdiZero” because the Christian Fellowship Church has already trademarked the term “Add a Zero.” The church’s trademark refers to a campaign encouraging congregation members to “add a zero” to their normal contributions, so that if they usually donated $5 to make it $50, for example. Adidas’s adiZero line includes the “Rose 2.0” sneakers, Chicago Bull Derrick Rose’s signature shoe. The church also registered an “Add a Zero +” logo mark.

The United States Patent and Trademark Office (USPTO) denied Adidas’ trademark request to register “adiZero” based on the existence of the “Add a Zero” trademark, presumably under a “likelihood of confusion” since the two group’s marks can be seen as similar enough to possibly confuse a consumer. (Don’t believe that?  Say them out loud.) According to the USPTO website, “the commercial relationship between the goods and/or services listed in the application” is also considered, but it would seem that in this instance the similarity of the marks was the deciding factor.

Adidas appealed the USPTO’s initial decision but lost, and has now asked that the office cancel the church’s trademark altogether because of little use, according to the Chicago Tribune. The paper also reports that although items containing the slogan are in the church’s gift shop, sales volume on those t-shirts and hats is usually low according to the attorney representing Christian Faith Fellowship. Accordingly, Adidas has argued that the church has abandoned the trademark under Section 14 of the Lanham Act and for that reason, the registration should be cancelled. Adidas also has argued that the church has never used the marks, and so its applications should be considered void from the beginning.  (It is admittedly difficult to see how the church’s specimens, included in its application materials, were adequate proof of use in commerce.)

The cancellation requests to the USPTO by Adidas are pending, and this is why the church has turned to Derrick Rose, to ask him to convince Adidas to stop pushing for the trademark. “We are not an affluent congregation, but a working class church in a working class community; and given the state of the economy we are working hard to keep our doors open,” Pastor E. James Logan wrote to Rose. (Although Adidas reportedly offered to pay $5,000 for the trademark, the church declined.)

Rose, who has not commented on the letter, has close ties to the South Side of Chicago, to which the Tribune notes, the adiZero line “pay[s] tribute”; Christian Faith Fellowship is located in Zion, Illinois in Lake County, north of Chicago.

Adidas has not commented on the case other than to reinforce its willingness to work with the church for a mutually agreeable conclusion.

What do you think about this trademark dispute?

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January 4th, 2012 at 6:07 pm