Playdom, Inc. v. Couture

TTAB Cancellation No. 92051115 (Feb. 3, 2014) available at http://ttabvue.uspto.gov/ttabvue/ttabvue-92051115-CAN-54.pdf

A recent cancellation proceeding before the Trademark Trial and Appeal Board nicely illustrates a basic, but commonly misunderstood, issue in trademark law: identifying a date of first use for a trademark or a service mark.

When Couture filed his application to register the mark PLAYDOM in connection with providing advice and information for film concept and script development, he listed the mark’s date of first use as May 30, 2008. In its petition to cancel Couture’s registration, Playdom, Inc. arguedinter alia that Couture’s mark was void ab initio because Couture had not actually used the mark in commerce prior to the registration, despite his use-based application and recital of the May 20, 2008 date as the mark’sdate of first use in commerce.

Pursuant to Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State.” Couture contended that he had used his mark in commerce as of May 20, 2008, pointing to his advertising through his website, distribution of business cards, and submission of scripts to studios and production companies. The record, however, clearly established that as of May 30, 2008, and indeed even as of the date he filed his application in 2009, Couture had yet to actually render any services under his mark.

Explaining that Couture had relied on his misunderstanding of the technical definition of “use in commerce,” the Board found that Couture had erroneously filed for a use-based application rather than an intent-to-use application. The Board further found that because Couture had “merely posted a website advertising his readiness, willingness and ability to render said services,” he had not used the mark in commerce for the listed services at the time he filed his application; the registration was therefore void ab initio and the petition to cancel was granted on that ground.