Service Mark Canceled – Not Used in Commerce At Time of Application

On March 2, 2015, in Couture v. Playdom, Inc., No. 2014-1480, 2015 WL 859524, at *1 (Fed. Cir. Mar. 2, 2015), the Federal Circuit Court of Appeals affirmed the Trademark Trial and Appeal Board’s (TTAB) granting of a petition to cancel Couture’s PLAYDOM service mark, because no services under the mark were provided until well after the application to register was filed.

On May 30, 2008, Couture filed an application to register the service mark PLAYDOM.  As a specimen showing use of the mark, Couture submitted a screen capture of a website offering Entertainment Services in commerce.  As of May 30, 2008, however, the website included only a single page that said, “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.”  Significant to the court was the inclusion of “Website Under Construction” on the website screenshot specimen.

Cancellation was affirmed because no actual services under the PLAYDOM service mark were provided until 2010 — well after the 2008 application filing date.

The Federal Circuit’s opinion is noteworthy, as the court notes: “We have not previously had occasion to directly address whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act…”

Here are the key take-aways:

  • To apply for a service mark registration under Lanham Act §1(a) (based on actual use, a not intent-to-use), a mark already must be used in commerce [as of the application filing date].
  • A mark for services is used in commerce only when (1) it is used or displayed in the sale or advertising of services and (2) the services are rendered.
  • In terms of demonstrating actual use in commerce, proof of advertising or publicizing a service that the applicant intends to perform in the future will not support registration.  Rather, advertising must relate to an existing service which has already been offered to the public.
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