Patterson Intellectual Property Law

Firm Update

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Trademark Registration requires actual provision of services

Does simply offering a service, without actually providing it, trigger the federal “use in commerce” requirement to register a trademark? For the first time, the U.S. Court of Appeals for the Federal Circuit has addressed this common question in Couture v. Playdom, Inc. Its ruling had a major impact on a registration that dated back to 2009.

Dueling marks

The plaintiff applied to register the mark PLAYDOM on May 30, 2008. As a specimen of the mark, he included a screenshot of his website offering entertainment services.

His site included only a single page that stated: “Welcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media.” The mark was registered by the U.S. Patent and Trademark Office on Jan. 13, 2009, but no services under the mark were provided until 2010.

On Feb. 9, 2009, Playdom, Inc., filed an application to register an identical mark, but the plaintiff’s registered mark was cited against the application. Later that year, to overcome the refusal to register its application, Playdom sought to cancel the plaintiff’s registration. Playdom argued that it was void because he hadn’t used the mark in commerce as of the date of application.

The Trademark Trial and Appeal Board (TTAB) granted the cancellation. It found that the plaintiff hadn’t provided his services as of the filing date because he’d merely posted a website advertising his readiness, willingness and ability to provide the services. He appealed.

Addressing the requirement

Under the federal Lanham Act, a mark must be used in commerce to qualify for registration. As the appellate court explained, the term “use in commerce” means the bona fide use of a mark in the ordinary course of trade — not merely a cursory effort to reserve a right in a mark. A mark for services is used in commerce only when it’s used or displayed in the sale or advertising of services and the services are provided.

An applicant’s preparations to use a mark in commerce, the court said, are insufficient to constitute use in commerce. The mark must actually be used in conjunction with the services described in the application for the mark.

The appellate court, however, had never before directly addressed whether merely offering a service satisfies the “use in commerce” requirement. In a 2009 case, Aycock Engineering, Inc. v. Airflite, Inc., the court stated that, at the very least, “there must be an open and notorious public offering of the services to those for whom the services are intended.” But, according to the court in Couture, the Aycock decision didn’t suggest that an open and notorious public offering alone is sufficient to establish use in commerce.

The court also noted that the plaintiff had cited no prior TTAB decisions that found offering a service to be sufficient. Moreover, the U.S. Courts of Appeals for the Second, Fourth and Eighth Circuits have interpreted the Lanham Act as requiring actual provision of services. The leading legal treatise on trademarks, McCarthy on Trademarks and Unfair Competition, came to the same conclusion.

And so did the appellate court. Finding no evidence that the plaintiff had provided services to any customer before 2010, it upheld the TTAB’s cancellation of his registration.

Clarifying its words

The court’s clarification of its Aycock ruling provides some certainty for those seeking and challenging trademark registration. It’s an important reminder that merely advertising or publicizing a service that the applicant intends to perform in the future won’t support registration. The advertising must relate to an existing service that has already been provided to the public.