The Federal Circuit ruled that a service mark is not “used” in commerce when the service at issue is merely advertised, rather than provided.

The dispute involved the mark “Playdom,” claimed by David Couture based on his service mark application in 2008.

Couture filed to register the mark for “entertainment and educational services” — specifically, advice on “concept and script development.”

The Website

Couture used the mark on a single-page website, which 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.

As of the service mark registration date, the website included the notice “under construction.”

Couture filed his application based on “actual use” of the mark rather than “intent to use.”

However, the Trademark Trial and Appeal Board (TTAB) found in 2014 that Couture had not actually “used” the mark. The TTAB found that Couture was mistaken that merely advertising a service, without actually providing it, was a “use in commerce.”

The TTAB found that Couture had “merely posted a website advertising his readiness, willingness and ability to render said services,” but that he did not actually provide services to a customer until March 2010 – almost two years after applying for the mark.

Disney

The mark was challenged by the Walt Disney Company, which acquired a company called Playdom in 2010. Playdom develops social network games for sites like Facebook.

When the Playdom game company sought to register its name as a trademark in 2009, registration was denied based on Couture’s mark.

The Federal Circuit affirmed the TTAB’s decision, noting that it had “not previously had occasion to directly address whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce.”

Take-Away

If a trademark applicant is not sure if use of a mark qualifies for the type of use that allows for registration, it is safest to file an intent-to-use application, and of course consult with an attorney who knows the law.