Availability to Provide Services is Not Trademark Use in Commerce

What is “use in commerce” for federal trademark registration application purposes?  David Couture filed a federal trademark application for PLAYDOM on May 30, 2008.  He submitted a screen shot of his single page website to demonstrate his use of the mark in commerce.  The website stated “welcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: playdominc@gmail.com.”  (Opinion pdf page 2).  The website also indicated that it was “under construction.” 

The U.S. Patent and Trademark Office (PTO) registered the PLAYDOM trademark on January 31, 2009.  Services were not provided under the PLAYDOM mark until 2010.  Is offering a service, without actually providing the service, use in commerce for the purpose of meeting federal trademark registration application requirements?

The Federal Circuit answers, “No.”

Playdom, Inc. filed an application to register PLAYDOM on February 9, 2009.  The PTO examining attorney rejected Playdom, Inc.’s application on the basis of Couture’s existing federal trademark registration.  Playdom, Inc. filed a petition to cancel Couture’s PLAYDOM trademark registration.  Playdom, Inc. argued that Couture’s application was void ab initio (from the start) because Couture did not use the mark in commerce as of the date of the application.  The Trademark Trial and Appeal Board agreed with Playdom, Inc. and granted the cancellation petition. 

The Board stated that Couture

had not rendered his services as of the filing date of his application because he had merely posted a website advertising his readiness, willingness and ability to render said services, and the registration was therefore void ab initio.

(Opinion pdf pages 2-3).

The Federal Circuit affirmed the Board’s ruling.

The Lanham Act (federal trademark statute) requires the mark to be “used in commerce” at the time the registration application is filed. 

A mark is used in commerce

on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

15 U.S.C. § 1127.

The registration of a mark that does not meet the use in commerce requirement is void ab initio.

(Opinion pdf page 3).

The Federal Circuit indicated that the two prong approach taken in the “use in commerce” provisions of the trademark statute reflects the nature of trademark rights.

There is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed.  The right to a particular mark grows out of its use, not its mere adoption.

(Opinion pdf page 5).

The Federal Circuit ruled that services must have actually been provided under the mark at the time of the registration application.

To qualify for registration, the Lanham Act requires that the mark be both used in the sale or advertising of services and that the services themselves have been rendered in interstate or foreign commerce.

(Opinion pdf page 6).

This case is Couture v. Playdom, Inc., No. 2014-1480, Federal Circuit Court of Appeals.

How does a business that wants to use a specific mark protect that mark from others until the business can establish use in commerce?  One possibility is filing an “intent to use” application.  15 U.S.C. §1051(b).

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