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In a recent decision, the Federal Circuit clarified the “use in commerce” requirement for trademark applications filed in connection with the provision of a service. In Couture v. Playdom, Inc., the court ruled that merely offering to provide a service will not support an application filed on the basis of actual “use in commerce.” Rather, for the mark to be registered, the applicant must show that the service was actually being rendered at the time of filing.

Background on the Case

In 2008, David Couture applied to register the mark “PLAYDOM” for “entertainment and educational services.” Couture filed his application under Section 1(a) of the Lanham Act, which requires that the applicant demonstrate the mark’s “use in commerce” for approval. At the time of the filing, Couture had a website offering these services, but he had not actually provided the services to any clients. With the law on this question unsettled, the US Patent and Trademark Office (USPTO) approved the application and registered the mark.

Playdom, Inc. (Playdom) subsequently petitioned to cancel the mark, arguing that Couture had not provided sufficient evidence of commercial use under Section 1(a). The Trademark Trial and Appeal Board (TTAB) agreed with Playdom. On appeal, the Federal Circuit affirmed the TTAB decision, explaining that the “use in commerce” element of Section 1(a) requires both that the mark is being used in the advertising or sale of the service and that the service is actually being rendered. By ordering the cancellation of Couture’s mark, the court cleared the way for Playdom’s application for the same mark, which had previously been rejected by the USPTO in light of Couture’s registration.

The Takeaway

Couture v. Playdom, Inc. should serve as a cautionary tale for applicants before the USPTO. Filing a “use in commerce” application for a service mark too early — that is, before the service is being rendered — can invalidate the registration, as was the case for Couture. Parties wishing to file for a service mark before the service is being rendered should consider filing an intent-to-use application under Section 1(b). While the mark will not be registered until the applicant provides evidence of “use in commerce,” Section 1(b) allows an applicant to essentially “reserve” the mark for a period of time during which commercial use can be established. Once the applicant submits its statement of use and the mark registers, the applicant’s rights also date back to the filing date of the application, which can prove to be extremely useful.