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U.S. Federal Circuit affirms TTAB’s decision canceling trademark registration, clarifying that service mark is “used in commerce” only when mark is both used or displayed in sale or advertising of services and services are rendered.
Appellant David Couture filed an application to register the service mark PLAYDOM pursuant to Lanham Act § 1(a) on May 30, 2008. To show use of the PLAYDOM mark, appellant submitted a screen shot of the website www.playdominc.com, which consisted of a single page stating: “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: email@example.com.” No services under the PLAYDOM mark were provided until 2010. The United States Patent and Trademark Office registered the PLAYDOM mark on January 13, 2009. A month later, appellee Playdom Inc. filed to register the identical mark, PLAYDOM. The USPTO rejected the mark under Lanham Act § 2(d), citing Couture’s existing registration. Playdom subsequently filed a petition to cancel the registration of Couture’s mark, arguing that his registration was void because he had failed to use the mark in commerce when he filed the application in 2008. The Trademark Trial and Appeal Board granted appellee’s petition to cancel based on lack of use at the time of the application, and Couture appealed.
The Federal Circuit noted that the case presented an issue of first impression: “[W]hether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce . . . .” Under the Lanham Act, a mark is used for commerce “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce[.]” Previously, the Federal Circuit had held that “[a]t the very least, in order for an applicant to meet the use requirement, there must be an open and notorious public offering of the services to those for whom the services are intended.” The Federal Circuit clarified that its previous decisions did not suggest that an open and notorious public offering alone is sufficient to establish use in commerce. Rather, the offered services must also be rendered. Because appellant had not actually used his mark in commerce, but just listed it on a website that itself offered no commercial service, the Federal Circuit affirmed the TTAB’s decision to cancel Couture’s registration.