Federal Circuit Clarifies Use in Commerce

The U.S. Court of Appeals for the Federal Circuit issued a ruling this week in Couture v. Playdom, Inc., No. 2014-1480 (Fed. Cir. Mar. 2, 2015), affirming a Trademark Trial and Appeal Board (TTAB) decision to cancel U.S. Registration No. 3560701, owned by appellant David Couture.  Couture filed a U.S. application in May 2008 for the mark PLAYDOM, for a variety of entertainment industry services, claiming use in commerce as of the application date.  A registration for Couture’s PLAYDOM mark issued in January 2009.  In February 2009, appellee Playdom filed a U.S. application for the same mark, for computer software and entertainment, computer, and social networking services.  When the U.S. Patent and Trademark Office issued a refusal based on Couture’s prior registration, Playdom initiated a cancellation proceeding against Couture’s registration at the TTAB.

As grounds for cancellation, Playdom argued that although Couture claimed a first use date of May 2008, his use consisted solely of launching a website advertising services under the PLAYDOM mark—no services were actually rendered in commerce before March 2010.  The TTAB agreed that use of a service mark in commerce requires the actual provision of the services listed in the application, not merely the advertising of the services, and granted the petition to cancel Couture’s PLAYDOM registration.  Couture then appealed the TTAB ruling to the Federal Circuit.  In affirming the TTAB’s decision, the Federal Circuit stated that, because “there is no evidence in the record showing that appellant rendered services to any customer before 2010… the cancellation of appellant’s registration was appropriate.”  The takeaway from this case is that merely advertising a service is not enough—the service must actually be rendered under the mark in order to establish use of the mark in commerce.  Read the Court’s opinion here.

 By Tony Webster (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.

By Tony Webster (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.