On March 2, 2015, in a case of first impression before the Federal Circuit, the Court directly addressed “whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45, 15 U.S.C. § 1127.” The Court said no.
In 2008, David Couture filed a trademark application for PLAYDOM for writing and production services. As part of the use based application pursuant to Lanham Act. § 1(a), Couture submitted a screenshot of a web page bearing the trademark to the United States Patent and Trademark Office (USPTO) as proof of use of the mark in connection with the identified services. That page simply had the PLAYDOM name and stated “[w]e are proud to offer writing and production services for motion picture film, television, and new media.” The USPTO approved the application in 2009, but no services were actually provided until 2010.
One month after PLAYDOM’s application was approved, Playdom, Inc. (a different company) filed a trademark application for the identical trademark, PLAYDOM. The new application for PLAYDOM was refused based on the Couture application for PLAYDOM. In response to the refusal, Playdom sought cancellation of Couture’s now issued registration for PLAYDOM before the Trademark Trial and Appeal Board (“TTAB”). Despite Couture’s belief that the availability of the services was sufficient to support the claim of use, the TTAB granted the cancellation of the Couture registration 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.'” (emphasis added) Accordingly, the original application was void ab initio. Couture appealed to the Federal Circuit, which upheld the decision of the TTAB.
In discussing its decision, the Federal Circuit noted that in its prior decision, Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed.Cir.2009), it stated that “[a]t the very least, in order for an applicant to meet the use requirement, there must be an open and notorious public offering of the services to those for whom the services are intended.” The Federal Circuit, however, went on to clarify that it did not suggest in Aycock that an open and notorious public offering alone is sufficient to establish use in commerce. Rather, the Federal Circuit stated that the “statute is clear that a mark for services is used in commerce only when both  ‘it is used or displayed in the sale or advertising of services and  the services are rendered.'” 15 U.S.C. § 1127 (emphasis added). Thus, in the Couture case, the mere advertising of a service “that the applicant intends to perform in the future will not support registration.”
The Couture decision emphasizes the importance of proper trademark use at the time of filing to support a resulting trademark registration. Since the Couture application was based on use, the trademark had to have been in acceptable use on the date the application was filed. If there is no use on the filing date of an application, the application can be filed based on an-intent to use the trademark, wherein once perfected, trademark rights are protected as of the filing date. As seen from this case, the consequences for failing to file the appropriate application can be catastrophic.
Anna Vradenburgh is a well-respected, business-minded expert in intellectual property issues. As a patent attorney licensed to practice before the United States Patent and Trademark Office, Anna assists clients in patent and trademark prosecution, and represents clients in trademark opposition matters, domain name dispute matters, and patent and trademark litigation. Anna can also assist your company in all manner of intellectual property protection. For more information, visit her website, or contact Anna at (818) 946-2300, or email her at firstname.lastname@example.org. This article is for educational purposes only and nothing in this article is intended to be, nor should be considered legal advice.