You really do need to use a mark to get a trademark registration.  In case anyone needs reminding, "Use in commerce", that is, use of a trademark or service mark in connection with the sale of goods or services really is required prior to receiving a trademark registration. (see our previous post regarding use requirements) We are putting aside for another day the lack of such a requirement for trademarks which claim priority to foreign trademark registrations... 

The Court of Appeals for the Federal Circuit (“Federal Circuit”) recently held that applicants for service marks under Section 1(a) of the Lanham Act must show that the advertised-for services have actually been rendered in commerce in Couture v. Playdom, Inc.

In 2008, the appellant in that case filed an application to register the service mark “PLAYDOM” under Section 1(a) of the Lanham Act and submitted a screenshot of a website as a specimen of use (i.e., proof that the mark was actually being used in commerce).  The website was created the same day as the application was submitted and displayed the phrase “Website Under Construction.”  In 2009, the “PLAYDOM” mark was registered by the United States Patent & Trademark Office (“USPTO”).  Shortly thereafter, the respondent filed an application to register an identical mark.  The trademark examining attorney cited the appellant’s registration as a basis for rejecting the second application.  The respondent later filed a petition to cancel the appellant’s (first in time) registration based on the appellant’s failure to use the mark in commerce as of the date of the application.  The Trademark Trial & Appeal Board (“TTAB”) granted the petition.

Section 1(a) of the Lanham Act requires a mark to be used in commerce to apply for registration.  “Use in commerce” refers to “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”  For service marks, a mark must be used in the sale or advertising of services and such services must be rendered in commerce.  According to Federal Circuit case law, advertising for services that do not currently exist is insufficient to support the “use in commerce” requirement.

The Federal Circuit explained that a service mark meets the “use in commerce” requirement when the mark is used in the sale or advertising of services and the services are rendered.  Here, the appellant created an incomplete website on the same day that he applied for service mark registration and no further evidence was presented to show that the appellant rendered services in commerce prior to the date of application.  Accordingly, the Federal Circuit affirmed the decision of the TTAB to cancel the appellant’s registration, holding that “rendering services requires actual provision of services.” 

So, yes, "Use in Commerce" really is needed for the registration of a trademark or service mark.  It is worth noting however that such Use doesn't need to be prior to filing an application for a trademark or service mark with the Trademark Office.  As indicated in our previous post an application may be filed if one has merely an "Intent to Use" a trademark or service mark in commerce.  The Use requirement may be satisfied later, i.e., after the completion of the examination process at the Office and extensions of time to prove such use may be obtained for up to three years from the date of approval of the mark.  The "Intent to Use" process is longer and more expensive but less fraught with risk as to whether satisfactory "Use in Commerce" had been shown.