In Couture v. Playdom, Inc., the Federal Circuit recently clarified that use of a service mark requires the actual rendering of services, and not merely the advertising of the services.
The United States is somewhat unique in that a trademark must be used in interstate commerce before it can register. An applicant must make a declaration to this effect, state the date of first use and submit a specimen showing the mark as it is used. The declaration of use may be submitted at the time the application is filed. Alternatively, the application can be filed based on intent-to-use, followed by the separate filing of a statement of use prior to registration.
David Couture filed an application for PLAYDOM, claiming that the mark had been used in interstate commerce. A screenshot of his website offering the claimed services was submitted to the trademark office as a specimen of use. The page indicated, “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.” No services under the mark were actually provided until well after the application was filed.
Playdom, Inc. later filed an application for the same mark. The trademark office refused Playdom’s application on the basis that it was likely to cause confusion with Couture’s prior mark. Seeking to remove the obstacle posed by Couture’s registration, Playdom filed a petition to cancel Couture’s mark on the basis that it had not been used in commerce as of the date of the application.
The Trademark Trial and Appeal Board granted the cancellation petition, stating that Couture “had not rendered his services as of the filing date of his application” because he had “merely posted a website advertising his readiness, willingness and ability to render said services,” and the registration was therefore void. The Federal Circuit upheld the TTAB’s decision.
Applicants of service marks may be well served to file applications based on intent-to-use rather than claim actual use of the mark unless it is clear the mark has been used in connection with the actual rendering of the claimed services in interstate commerce. An intent-to-use application would provide the benefit of an earlier filing date, with a relatively minor inconvenience and cost of later filing a statement of use, once it’s clear the mark has been sufficiently used.