Playdom, Inc. filed a petition to cancel Couture’s mark, arguing that the registration was void because Couture did not use the mark in commerce as of the date of the application. Couture originally filed for the mark “PLAYDOM” in 2008 using a screen capture of a website to show use in commerce. The website was a single page, which offered services and provided contact information for those seeking services. However, Couture did not provide services related to the mark until 2010. The Board granted the cancellation petition because Couture had not rendered services as of the filing date of the application.
In affirming the Board’s decision, the Federal Circuit held that the offering of a service, without the actual provision of the service, is insufficient to constitute use in commerce. Registration of a mark for services is considered used in commerce only when (1) it is used or displayed in the sale or advertising of services and (2) the services are rendered. Rendering services requires actual provision of those services. Because Couture merely advertised for services, which were not rendered as of the filing date, cancellation of the registration was appropriate. The Federal Circuit also held that Couture could not amend the basis of the application because such an amendment is only appropriate while the application is pending.
Couture v. Playdom, Inc., Case No. 2014-1480 (Fed. Cir., March 2, 2015)