Offering of services without actual use does not qualify as use for basis of registration

In a precedential ruling, the Federal Circuit has held that the advertising or offering of a service, without actually providing the service, cannot constitute use in commerce sufficient to support a service mark registration (Couture v Playdom Inc (No 2014-1480, March 2 2015)).

As noted by the Federal Circuit, its decision is consistent with decisions in the Second, Fourth and Eighth Circuits, which have similarly held that actual provision of services is required for use in commerce of a service mark. The Federal Circuit clarified that its prior decision in Aycock Eng’g Inc v Airflite Inc, which held that “at 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”, did not suggest that an open and notorious offering alone was sufficient to establish use in commerce. Rather, services must have actually been rendered. Trademark rights in the United States arise under the Commerce Clause of the US Constitution and the Supreme Court long ago ruled that a trademark does not exist without use in commerce. In other words, if the mark is not associated with a product or a service, it simply does not exist.

In affirming the Trademark Trial and Appeal Board’s (TTAB) cancellation of the service mark PLAYDOM, the Federal Circuit held that the mark was void ab initio because the mark owner’s services were not being offered to the public as of the use-based application’s filing date, even though the mark owner had launched a website advertising those services. The mark owner, David Couture, filed his application in May 2008 seeking registration of PLAYDOM in connection with its writing and production services for the entertainment industry and claiming actual use under Section 1(a) of the Lanham Act. The mark was registered in January 2009.

In February 2009 just one month later, the online social network game developer Playdom Inc filed an application to register an identical mark in connection with gaming software and related goods and services, claiming an intent to use under Section 1(b) of the Lanham Act. Playdom’s application was denied based on likelihood of confusion with Couture’s mark as registered. Rather than challenging the denial at the Trademark Office, Playdom petitioned to cancel Couture’s registration, arguing that it was invalid because Couture had not used the mark in commerce as of the date of his application. Evidence regarding the issue of use included a letter wherein Couture stated that “upon request” he would be “willing and capable of performing all services listed in [his] trademark registration”, as well as his testimony that he had only one client, and that he had billed it for the first time in March 2010, almost two years after the trademark registration. The TTAB cancelled the registration, holding that “the services identified in a use-based service mark application must be rendered before the filing of a service mark application”. 

The TTAB, as confirmed by the Federal Circuit, similarly denied Couture’s request to amend the trademark registration basis to an intent-to-use application, noting that a request to change the basis of an application must be filed before the registration is issued.

Had Couture filed his application based on an intent to use, the May 2008 filing date would have been Couture’s “constructive use” date for purposes of priority, allowing him to extend his time to file a statement of use until he actually rendered the services in 2010.

Roxanne Elings, Davis Wright Tremaine LLP, New York