Service Mark Registration Void When Services Not Provided as of Application Date: Federal Circuit | Practical Law

Service Mark Registration Void When Services Not Provided as of Application Date: Federal Circuit | Practical Law

In Couture v. Playdom, Inc., the US Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) to cancel a service mark holder's registration where there was no evidence showing that the service mark holder had rendered services to any customer when it filed its use-based application.

Service Mark Registration Void When Services Not Provided as of Application Date: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 03 Mar 2015 • USA (National/Federal)
In Couture v. Playdom, Inc., the US Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) to cancel a service mark holder's registration where there was no evidence showing that the service mark holder had rendered services to any customer when it filed its use-based application.
On March 2, 2015 the US Court of Appeals for the Federal Circuit issued a decision in Couture v. Playdom, Inc., affirming the Trademark Trial and Appeal Board's (TTAB) cancellation of a service mark registration where there was no evidence the service mark holder had rendered services to any customer when it filed its use-based application to register the mark (No. 2014-1480 (Fed. Cir. Mar. 2, 2015)).
David Couture filed an application to register the service mark PLAYDOM (the Mark) on May 30, 2008. As a specimen showing use in commerce, he submitted a screenshot of a website, www.playdominc.com. The website consisted of a single page offering writing and production services for film, television and new media, and provided a contact e-mail address. The USPTO registered the Mark on January 13, 2009. Couture did not provide any services under the Mark until 2010.
The USPTO cited the Mark as a ground for rejecting Playdom, Inc.'s attempt to register the identical PLAYDOM mark in 2009. Playdom filed a petition to cancel Couture's Mark, arguing that the Mark was void ab initio because Couture had not used the mark in commerce as of the date of his application. The TTAB agreed and cancelled the mark, noting that Couture had only advertised his readiness to provide services.
On appeal, the Federal Circuit noted it had not directly addressed whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under the Lanham Act, 15 U.S.C. § 1127. However, it explained that to demonstrate the necessary use in commerce to register a mark under the Lanham Act, the statute clearly requires that both:
  • A mark is used or displayed in the sale or advertising of services.
  • Services are actually rendered.
Merely offering a service, without actually providing a service, is insufficient to establish the required use in commerce necessary to qualify for registration of a service mark.
The Federal Circuit recognized that other federal circuit courts, the TTAB and the leading trademark treatise all agree that the actual provision of services is required to establish the necessary use in commerce to register a service mark. In this case, since there was no evidence showing that Couture rendered services to any customer before 2010, the Federal Circuit held that cancellation of his registration was appropriate.