Here’s a common scenario: Your business has come up with an idea for a new service offering, and you or your marketing department has created the perfect brand for it. Now what?
Because you have a great relationship with your trademark lawyers, you know that you need to clear it before you adopt it. The clearance search comes back just as you hoped it would – nobody else appears to be using anything close to your proposed mark. You are ready to file your trademark application with the United States Patent and Trademark Office.
You know from your prior trademarks that you can’t obtain a federal registration for your trademark without demonstrating use of the mark, so you create a web page to promote your new service. Web pages can make great specimens to support your service mark application. So, although you have not yet started providing the new service to any of your customers, you are using the mark and advertising it publicly on your website, and perhaps elsewhere. You immediately contact your trademark lawyer to initiate the application process and provide her with your web page specimen showing your perfect new brand in connection with adverting the new service. You tell your lawyer that you first started using the mark on March 1 (when you put up your web page), and you submit your trademark application on March 2. Everything is going great; your promotions lead to your first customer on April 1, and throughout the month of April they just keep rolling in. Your application sails through the Trademark Office, and your new service mark is federally registered later in the fall.
There’s just one problem. Your registration is not valid. It is subject to cancellation if you ever assert it against an infringer, or even if your mark gets cited against another person’s later filed application. Why? Because you were not actually rendering your services on the date you filed your application when you declared that you were using your mark in commerce. In Couture v. Playdom, Inc., the United States Court of Appeals for the Federal Circuit affirmed the cancellation of the “PLAYDOM” mark in circumstances similar to those described above.
In that case, David Couture filed an application to register the mark PLAYDOM for “Entertainment and educational services, namely, providing advice and information for music, video and film concept and script development; Motion picture film production; Production of television programs; Script writing services; Scriptwriting services.” He claimed a date of first use of May 30, 2008, the same day he filed the application, which he supported with a screen shot of his website advertising the services and soliciting anyone who wished to retain him to contact him. He did not begin actually providing any services until 2010. His registration was cited against an application filed by Playdom, Inc. for the identical mark in 2009. Playdom, Inc. petitioned to cancel Mr. Couture’s mark and prevailed because Mr. Couture was not actually rendering any services as of the date he filed his application.
The Federal Circuit looked to the plain meaning of the statute which reads that for services, “use in commerce” means “it is used or displayed in the sale or advertising of services and the services are rendered in commerce…” 15 U.S.C. § 1051(a)(1) (underline added). There must be both. Advertising alone is not enough.
This does not mean that you must wait until you begin rendering the service to file a trademark application. In the above situation you can and probably should file an intent to use application, which will give you the same priority date for the registration. Once your services are actually rendered, then you may file a statement of use in commerce. So long as no statement of use is filed before the services are actually rendered, your registration cannot be “Coutured.”