The Board granted Opposer Tidal Music's motion for summary judgment, concluding that Applicant Rose Digital had failed to prove use of the applied-for mark #TIDALTUESDAY for advertising and promotional services at the time it filed the challenged application. Rose pointed to its promotion of "the coming of the '#TidalTuesday' product" and its active development of website and product presentations. Not good enough, said the Board. Tidal Music AS v. The Rose Digital Entertainment LLC, Opposition No. 91232127 (September 8, 2017) [not precedential].
In an application based on use in commerce under Section 1(a), the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date. If the applicant has not used the mark on any of the goods or services, then the application is void ab initio.
Applicant maintained that "The Rose Digital Entertainment has not started releasing original content under the #TidalTuesday mark," but is "promoting the coming of the '#TidalTuesday' product," and "actively developing website product presentations." It provided screenshots of its Twitter and Facebook pages," but the Facebook page showed no activity and the Twitter page displayed only several posts of the term "TIDALTUESDAY" and nothing more.
The Board observed that use of a service mark occurs when it is (1) used or displayed in the sale or advertising of services and (2) the services are rendered in commerce. "No matter how earnest, the mere preparation to use a mark in the rendering of services is insufficient."
Applicant failed to submit any evidence that would raise a factual dispute as to its lack of use of the mark. "Employment of a mark to promote a service not yet rendered is not use of a mark in commerce under the statute."
In particular, the forward-looking nature of Applicant’s statements, e.g. “planning,” “developing,” and “coming soon,” demonstrates that Applicant has yet to use the mark in connection with any services and is still planning and developing a strategy to use the mark. Indeed, Applicant’s concessions made in its answer and the corresponding statements made in its response to the present motion for summary judgment do not show any dispute whether Applicant has used the mark in commerce in connection with any of the services listed in the application.
The mere mention of a term on the Internet, without advertising and rendering of the services, does not constitute use of a service mark in commerce. The advertising must "relate to an existing service which has already been offered to the public."
And so the Board found that applicant had not used the applied-for mark as of its filing date, and it granted the motion for summary judgment.