Couture v. Playdom, Inc.
113 U.S.P.Q. 2d (BNA) 2042, 2015 U.S. App. LEXIS 3135, 778 F.3d 1379 (2015)
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Rule of Law:
To satisfy the 'use in commerce' requirement for service mark registration under the Lanham Act, an applicant must both use the mark in the advertising of services and actually render those services in commerce by the application filing date; mere advertisement of services to be offered in the future is insufficient.
Facts:
- On May 30, 2008, David Couture created a single-page website at www.playdominc.com.
- The website stated, 'We are proud to offer writing and production services for motion picture film, television, and new media' and included a notice that the 'Website [is] Under Construction.'
- On the same day, May 30, 2008, Couture filed an application to register the service mark PLAYDOM based on actual use in commerce, submitting a screenshot of his website as the specimen.
- Couture did not provide any services under the PLAYDOM mark until 2010, nearly two years after filing his application.
Procedural Posture:
- David Couture filed a § 1(a) application for the service mark PLAYDOM, which the U.S. Patent and Trademark Office (PTO) granted, issuing a registration on January 13, 2009.
- Playdom, Inc. subsequently filed an application for the identical mark, which was rejected by the PTO examining attorney based on Couture's existing registration.
- Playdom, Inc. then filed a petition with the Trademark Trial and Appeal Board (the 'Board') to cancel Couture's registration, arguing it was void ab initio for lack of use in commerce at the time of filing.
- The Board granted Playdom, Inc.'s petition, finding Couture had only advertised his readiness to perform services and had not actually rendered them, and therefore cancelled the registration.
- Couture, as appellant, appealed the Board's cancellation decision to the U.S. Court of Appeals for the Federal Circuit, with Playdom, Inc. as the appellee.
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Issue:
Does an applicant's advertising of services on a website, without having actually rendered any of those services to a customer, satisfy the 'use in commerce' requirement for service mark registration under the Lanham Act?
Opinions:
Majority - Dyk, Circuit Judge
No. Merely advertising a service without actually rendering it does not constitute 'use in commerce' under the Lanham Act. The statute, 15 U.S.C. § 1127, unambiguously requires that a mark be both 'used or displayed in the sale or advertising of services' AND that 'the services are rendered in commerce.' Preparations to use a mark, such as creating a website advertising a future service, are insufficient. Trademark rights are appurtenant to an established business and arise from actual use, not from mere adoption or an intent to use. Since Couture had not rendered any services to the public when he filed his application, he had not met the statutory requirement for 'use in commerce,' rendering his registration void from the beginning.
Analysis:
This decision clarifies the statutory two-part test for 'use in commerce' for services, firmly establishing that actual provision of the service is a mandatory prerequisite for an actual-use-based registration under § 1(a) of the Lanham Act. It reinforces the principle that trademark rights cannot be warehoused or reserved through minimal preparatory activities like creating a basic website. The ruling solidifies the distinction between an 'actual use' application and an 'intent-to-use' application, guiding future applicants to choose the correct filing basis and preventing them from obtaining priority based on a mark that is not yet genuinely in commercial use.
