The United States Supreme Court is being asked to provide some precision to the term “use in commerce.” And the decision could have an enormous impact in our online world.
David Couture is a California resident who offered “entertainment services” since 2003. In 2008, Couture filed an application to trademark the term "Playdom." Couture contended he had created a Web site called playdominc.com. That Web site consisted of a single page, which stated:
“[w]elcome 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.”
A company called Playdom, Inc. contested the application. It argued Couture was not eligible to register the mark because he had never actually used the mark “in commerce.”
Using a mark “in commerce” is a requirement for registering a trademark. And it makes sense. The requirement prevents “idea guys” from cornering the market on trademarks. Imagine if a person could sit around all day thinking up product names, register the names and then make companies who actually want to offer products and services pay for the name. Probably not a workable scheme. Requiring the idea guy to actually use the name in connection with offering to sell the product or service makes this type of extortion less likely.
Couture’s case raises a sort of middle ground. He clearly was a little more than an idea guy – he apparently did offer goods and services. And giving him the benefit of the doubt, it appears he really did plan to use the Web site to offer the services. The problem for Couture was that he never provided services under the Web site until after he filed the application. And in the view of the Trademark Trial and Appeal Board, as well as the Court of Appeals, that meant his application was void ab initio (Latin for “from the get go”). The law requires that the trademark be used in commerce at the time of the application.
Both the Board and the appellate court concluded that merely posting a Web page and offering goods and services is not enough to establish a use in commerce. There has to be actual “commerce” – i.e. something bought and sold. Good intentions don’t cut it.
Couture has asked the United States Supreme Court to review the case. The Supreme Court exercises “discretionary review.” It does not have to hear any case, and in fact, it rejects over 90% of the cases offered to it. This no doubt allows the court to take its lengthy summer vacation – June to October. Coupled with lifetime tenure, not a bad gig. But I digress.
A party has to ask the Supreme Court to hear its case. It does so via a “petition for certiorari.” And part of the petition requires the party to explain why the appeal matters. Here’s Couture’s pitch to the Court:
This Federal Circuit’s ruling opens up the possibility of a litany of litigation. Larger corporations might be more apt to contest any trademark application of an individual or smaller entity that submitted a specimen consisting of a website and win through this ambiguity of law or by sheer intimidation.
Ah yes, the David v. Goliath approach. I’m pretty certain the Supreme Court will leave this one be. Commerce is commerce. And it’s unlikely the Court is going to change that definition anytime soon.