Trademarks

Two Hats, One Commerce Clause: Christian Faith Fellowship Church v. adidas

A single in-state sale of two caps to an out-of-state buyer was enough use in commerce to defeat cancellation, as the Federal Circuit rejected a de minimis test for Lanham Act use.

September 8, 2025
Embroidered baseball caps displayed on a retail rack
The sale of two embroidered caps for $38.34 was enough to keep a federal registration alive. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016), No. 2016-1296 (decided November 14, 2016), the U.S. Court of Appeals for the Federal Circuit reversed the cancellation of two federal registrations, holding that a church’s in-state sale of two hats to an out-of-state buyer was enough use in commerce to support registration under the Lanham Act. The sale totaled $38.34. Writing for a panel that included Judges Reyna and Hughes, Judge Stoll grounded the decision in the Commerce Clause: because Congress may regulate even small, local transactions that, in the aggregate, affect interstate commerce, such a transaction is “use in commerce” within the meaning of the statute. The court expressly declined to read a de minimis exception into the requirement.

At a glance

  • Case: Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016), No. 2016-1296.
  • Decided: November 14, 2016; panel of Reyna, Hughes, and Stoll (opinion by Judge Stoll).
  • Marks at issue: Two ADD A ZERO registrations covering clothing, obtained by the Church based on actual use.
  • The transaction: In early 2005, before the Church applied to register, it sold two ADD A ZERO caps for a total of $38.34 to a buyer whose check carried a pre-printed Wisconsin address; the Church operated in Illinois.
  • The Board’s ruling: The Trademark Trial and Appeal Board cancelled the registrations, finding the sale too de minimis to constitute use “in commerce.”
  • The holding: The Lanham Act defines commerce as all commerce Congress may lawfully regulate; an in-state sale to an out-of-state resident falls within that power, so it is use in commerce. No de minimis carve-out applies.
  • Disposition: Reversed and remanded for the Board to address adidas’s remaining grounds.

How a fundraising sale ended up in the Federal Circuit

The dispute began far from any courtroom. In 2005, Christian Faith Fellowship Church, located in Illinois within a few miles of the Wisconsin border, ran a fundraising campaign selling caps and shirts bearing the phrase ADD A ZERO. As part of that effort, the Church sold two ADD A ZERO hats. The buyer paid by check that listed a Wisconsin home address, and the two-hat sale came to $38.34. Shortly afterward, the Church applied to register ADD A ZERO and obtained two registrations based on use.

Years later the marks collided with a corporate giant. In 2009, adidas sought to register ADIZERO for clothing. The Trademark Office refused, citing a likelihood of confusion with the Church’s ADD A ZERO registrations. adidas responded by petitioning to cancel those registrations, arguing among other things that the Church had not used the marks in commerce before registering them. The Board agreed on that point, treating the documented two-hat sale as too trivial — too “de minimis” — to count as use in commerce, and cancelled the registrations. The Church appealed.

Commerce means everything Congress can reach

The Federal Circuit’s reasoning began and largely ended with definitions. The Lanham Act ties “use in commerce” to “commerce,” and it defines “commerce” as “all commerce which may lawfully be regulated by Congress.” That is not an ordinary, intuitive sense of interstate trade. It is a deliberate incorporation of the full sweep of the Commerce Clause power. So the real question was not whether the two-hat sale felt economically significant; it was whether Congress could constitutionally regulate that sale.

To answer it, the court turned to bedrock Commerce Clause doctrine. Under Wickard v. Filburn and Gonzales v. Raich, Congress may regulate purely local, even trivial, activity when that activity is part of a class of conduct that, taken in the aggregate, substantially affects interstate commerce. The Supreme Court has repeatedly said that the de minimis character of any individual instance is irrelevant to the analysis; what matters is the aggregate effect of the regulated class. Sales of goods to consumers are precisely such a class. A single sale of two caps to an out-of-state resident is one instance of a category of transactions that, in the aggregate, plainly affects interstate commerce — and is therefore within Congress’s power to regulate.

From that premise the conclusion followed cleanly. Because Congress could regulate the Church’s sale, the sale was “commerce” as the Lanham Act defines it, and the Church’s use of ADD A ZERO in that sale was “use in commerce.” The court found it unnecessary to decide whether the buyer’s Wisconsin residency was strictly required, but the cross-border feature made the point unmistakable: this was not a wholly intrastate event even on a narrow view.

No de minimis exception

The most consequential move was what the court refused to do. The Board had effectively engrafted a threshold onto the statute — a sale had to be more than trivial to qualify. The Federal Circuit rejected that approach. Nothing in the Lanham Act’s text authorizes courts or the Board to filter out qualifying transactions because they are small. The statute asks whether the activity is commerce Congress may regulate, and Commerce Clause doctrine answers that question without reference to the size of the individual sale.

The court also addressed older authority that had suggested something beyond a single modest intrastate sale was needed to show use in commerce. To the extent such cases implied a de minimis requirement, the panel declined to follow them, treating the statutory definition and controlling Commerce Clause precedent as dispositive. The result is a registration-stage rule that is generous to small users and intolerant of judicially invented minimums: a bona fide sale that Congress could regulate is enough.

It is worth being precise about the scope of the holding. The court resolved whether the Church’s sale qualified as use in commerce for purposes of registration. It did not purport to settle every downstream question about the strength, validity, or enforceability of the marks. The reversal sent the case back to the Board to take up adidas’s other arguments, which is where the larger battle over the ADD A ZERO marks continued.

Open questions

  • Must the buyer be out of state? The court did not hold that cross-border residency is necessary, leaving open whether a comparable wholly intrastate sale would qualify on the same reasoning.
  • Does a single sale always suffice? The decision establishes that a single qualifying sale can be enough, but the bona fides of the transaction (genuine versus contrived) remain a live issue in close cases.
  • How does this interact with token-use and sham-use concerns? A rule that accepts small sales invites scrutiny of whether a sale is real commercial activity or a manufactured specimen.
  • What survives on remand and beyond? The opinion left adidas’s other challenges — including arguments about whether the phrase functions as a mark — for the Board, so registration-stage use was only one chapter.

Implications

  • Small users can clear the use bar. A genuine, modest sale of goods can satisfy the use-in-commerce requirement for registration; there is no minimum dollar amount or volume baked into the statute.
  • “Commerce” equals the full Commerce Clause. Practitioners should analyze use in commerce by asking whether Congress could regulate the transaction, not whether it feels like meaningful interstate trade.
  • The de minimis defense is weakened at the registration stage. Challengers should not expect to prevail merely by characterizing the registrant’s sales as trivial.
  • Document bona fide sales carefully. Because a single sale can matter, keep records — invoices, checks, shipping details — that show the transaction was real and that the mark appeared on the goods.
  • Registration use is not the whole war. Surviving a use challenge does not insulate a mark from other attacks, including failure-to-function and abandonment arguments.

Frequently asked questions

Was a single sale of two hats really enough to keep the registrations alive? Yes, for purposes of the use-in-commerce requirement for registration. The Federal Circuit held that the Church’s sale of two ADD A ZERO caps for $38.34 to an out-of-state buyer was a transaction Congress could regulate under the Commerce Clause, and therefore qualified as use in commerce under the Lanham Act.

Did the court adopt a de minimis test for use in commerce? No. The court rejected the idea that a sale must exceed some threshold of significance. Under Wickard v. Filburn and Gonzales v. Raich, the de minimis nature of an individual transaction does not remove it from Congress’s regulatory power, so it does not remove it from the Lanham Act’s definition of commerce.

Did the Church ultimately defeat adidas? This decision only resolved the use-in-commerce question and reversed the cancellation on that ground. The Federal Circuit remanded for the Board to consider adidas’s remaining arguments, so the dispute over the ADD A ZERO marks continued beyond this ruling.

Authorities and sources