Trademark “use in interstate commerce” and the decline of federalism

What’s the use?

Trademark use, that is.  Heck, it’s getting harder to figure out what’s not “trademark use” these days, as John Welch reports:

The CAFC reversed the TTAB’s decision in adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (September 14, 2014) [not precedential], ruling that the sale of two hats at the Church’s bookstore to an out-of-state purchaser constituted use in commerce of applicant’s mark ADD A ZERO. The Board had granted the petition of adidas AG for cancellation of two registrations owned by the Christian Faith Fellowship Church for the mark ADD A ZERO, in standard character and design form, for “clothing, namely shirts and caps,” finding that these sales were de minimis and insufficient to show use that affects interstate. Christian Faith Fellowship Church v. adidas AG, Appeal No. 2016-1296 (Fed. Cir. November 14, 2016) [precedential]. . .

The CAFC observed that its prior rulings in “use in commerce” cases reflect the broad scope of Congress’s Commerce Clause powers. For example, in Larry Harmon, the court argued that the Lanham Act’s requirement could be satisfied by a single-location restaurant and it refused to adopt a de minimus test for the “use in commerce” requirement. 929 F.2d at 663. In Silenus Wines, the CAFC held that the intrastate sale of imported French wine constituted “use in commerce.” 557 F.2d at 809.

In the case at hand, the Court found it clear in light 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 Lanham Act.

Shoe number two, meet floor.

I myself had thought there was something that wasn’t trademark use all that long ago, when, merely in passing, I not so accurately wrote the following:

In one recent situation I encountered, a restaurant owner was all but certain that the owner of the registration whose mark was very much like his had been unduly “inspired” by his own restaurant.  The person who contacted me did not operate across state lines, and it seemed unlikely that the registrant did either — though the latter would have had to claim to have done so in order to get the registration. …

Not so right, and “Michael F.” called me out for it in the comments:

Many restaurants with a single location in only one state can meet the requirement of use in interstate commerce, simply by serving guests from out of state. There doesn’t need to be intent to operate across state lines.

I suppose this is one of the reasons why restaurants typify the quintessential concurrent registration scenario.

Here’s a excerpt from TMEP Section 901.03:

Purely intrastate use does not provide a basis for federal registration. However, if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of the Act. See Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in “use in commerce”)…

I made some attempt at recovery, but, guess what:  He and the TMEP were right, though evidently just how far this went seems to have been news to the PTO until the Federal Circuit’s Christian Federal Church decision.

Certainly my use, as an example, of a restaurant with supposedly only local custom was looking for trouble — after all, Katzenbach v. McClung 379 U.S. 294 (1964) is almost as old as your blogger.  That’s the landmark case in which, following the previous decade of expansion of the Commerce Clause, the Supreme Court unanimously held that the Commerce Clause authorized Congress to forbid racial discrimination in restaurants on the grounds that Jim Crow laws burdened interstate commerce.

So if ordering a cup of Joe in a diner hundreds of miles from any state border is “interstate commerce” for civil rights purpose, it should be commerce for trademark purposes, right?

Of course right.  Per John again:

The appellate court pointed out that the definition of “commerce” in the Lanham Act means “all commerce that may be lawfully regulated by Congress.” It concluded that because “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.” . . .

It seems that way.  Which is a little odd, because while Congress has the power, under Katzenbach and related Commerce Clause cases, to regulate seemingly anything, from the language of the Lanham Act it doesn’t appear to have actually done so.  As John asks:

After this decision, is there any “use” of a trademark or services mark that does not satisfy the “use in commerce” requirement? Is the old “interstate / intrastate” dichotomy dead, as far as “use” goes?

In other words, for application purposes are “first use” and “first use in commerce” now the same thing?

And if not, why did Congress define them as different things?

Well, this trend is a thing, after all:

Alito: If you are tweeting, liveblogging, you can be said to engage in interstate commerce—electrons flying all over the place. #FedSoc2016

— Josh Blackman (@JoshMBlackman) November 17, 2016

So it goes. Get used to it.

UPDATE:  We talked about this whole stuff here.