Using a Service Mark In Commerce

Playdom petitioned to cancel Couture's registration, on the grounds that he had not actually used his mark in commerce on the date he filed his use-based application. Couture described the specimen of use submitted with his application as a screenshot of his website offering his entertainment services in commerce. The screenshot was of a single page website created the same day as the filing date of his application, stating: “Welcome to PlaydomInc.com. 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: [email protected].” The website also included the notice: “Website Under Construction.” However, Couture did not actually provide any of his entertainment services until more than a year after filing his application (and also after the filing date of Playdom's application).

The Trademark Trial and Appeal Board (TTAB) ordered cancellation of Couture's registration, concluding that he had not “rendered his services as of the filing date of the application.” Merely posting a website advertising that he was ready, willing, and able to provide his services was not sufficient, where Couture had not actually provided those services to any customer on the date the application was filed. Couture appealed that decision to the Federal Circuit.

The Federal Circuit's Decision

The Federal Circuit noted that preparations to use a mark in commerce are not sufficient to constitute use in commerce. Merely advertising or publicizing a service the applicant intends to perform in the future will not suffice; the advertising must relate to an existing service already offered to the public. Although the Federal Circuit had previously stated that the applicant must make “an open and notorious public offering” of services to those for whom the services are intended, the court did not intend to suggest in that case that an open and notorious offering alone was sufficient to establish use in commerce. Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009). The court also observed that the Second Circuit, Fourth Circuit and Eighth Circuit have interpreted '45 as requiring that the services advertised in the specimen of use have actually been provided. See, Buti v. Impressa Perosa, S.R.L., 139 F.3d 98 (2d Cir. 1998); International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Mnoaco, 329 F.3d 359 (4th Cir. 2003); Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir. 2010).

The court found that '45 is clear that a service mark must both be used or displayed in the sale or advertising of services and the services must have been rendered. As there was no evidence that Couture provided his services to any customer until long after the filing of the application and issuance of the registration, the Board's order to cancel his registration was appropriate. The Federal Circuit also held that the Board correctly refused to allow Couture to amend the basis of his registration to “intent-to-use,” because the permitted substitution of one application filing basis for another, whether before or after publication of the application, must be made while the application is still pending, not after the registration has issued.

Conclusion

Although this decision was based on the definition of “use in commerce” for a service mark, it should be equally applicable to a trademark. “Use in commerce” for goods occurs when the mark “is placed in any manner on the goods or their containers or on displays associated therewith or on tags or labels affixed thereto ' and “the goods are sold or transported in commerce.” The decision should also be applicable to the specimen of use provided with the Statement of Use when an applicant seeks registration based on the applicant's intent to use the mark in commerce. It would not be enough to provide a screen shot from a website with the Statement of Use, if the applicant had not yet provided any services to customers.

Judith L. Grubner is a partner in the IP Practice Group of Arnstein & Lehr LLP and a member of this newsletter's Board of Editors. She may be contacted at [email protected].

To apply for a trademark or service mark registration based on use of a mark, the mark must be “used in commerce.” Section 45 of the Lanham Act, 15 U.S.C. '1127, provides that “use in commerce” in connection with services exists when the mark is “used or displayed in the sale or advertising of services and the services are rendered in commerce ' and the person rendering the services is engaged in commerce in connection with the services.” Service mark owners commonly believe that putting up a website or running print advertisements to offer their services to prospective customers is enough to fulfill the requirement that a mark must be used in commerce. However, U.S. Court of Appeals for the Federal Circuit has now ruled that advertising a service that the applicant intends to provide in the future, but is not actually providing on the date of the application, is not “use in commerce.” Couture v. Playdom, Inc., No. 2014-1480 (Fed. Cir. Mar. 2, 2015). Thus, advertising submitted to the U.S. Patent and Trademark Office with a use-based application as a specimen of use of the mark in commerce, must relate to existing services already being provided to customers. The registration for a mark that does not meet the use requirement is void ab initio (from the outset).

The issue arose in the context of a cancellation proceeding brought by Playdom, Inc., which had applied to register the mark PLAYDOM. The examining attorney stated that a prior registration for PLAYDOM, owned by David Couture, was confusingly similar to Playdom's mark. Couture's registration covered “Entertainment and educational services, namely, providing advice and information for music, video and film concept and script development; Entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media; Motion picture film production; Production of television programs; Script writing services; Scriptwriting services” in International Class 41. Playdom's Class 41 services covered “Entertainment services, namely, providing computer games, enhancements for computer games, game applications and development tools, reviews of computer games, information relating to computer games, game enhancements and development tools via the internet, computers, mobile computers and wireless devices; providing an Internet website portal in the field of computer games and gaming; providing an Internet website portal featuring news and information regarding computer games, game enhancements and development tools, and social networking tools and opportunities; providing links to other websites that feature computer games and information regarding computer games and social networking tools and opportunities.”

The TTAB's Decision

Playdom petitioned to cancel Couture's registration, on the grounds that he had not actually used his mark in commerce on the date he filed his use-based application. Couture described the specimen of use submitted with his application as a screenshot of his website offering his entertainment services in commerce. The screenshot was of a single page website created the same day as the filing date of his application, stating: “Welcome to PlaydomInc.com. 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: [email protected].” The website also included the notice: “Website Under Construction.” However, Couture did not actually provide any of his entertainment services until more than a year after filing his application (and also after the filing date of Playdom's application).

The Trademark Trial and Appeal Board (TTAB) ordered cancellation of Couture's registration, concluding that he had not “rendered his services as of the filing date of the application.” Merely posting a website advertising that he was ready, willing, and able to provide his services was not sufficient, where Couture had not actually provided those services to any customer on the date the application was filed. Couture appealed that decision to the Federal Circuit.

The Federal Circuit's Decision

The Federal Circuit noted that preparations to use a mark in commerce are not sufficient to constitute use in commerce. Merely advertising or publicizing a service the applicant intends to perform in the future will not suffice; the advertising must relate to an existing service already offered to the public. Although the Federal Circuit had previously stated that the applicant must make “an open and notorious public offering” of services to those for whom the services are intended, the court did not intend to suggest in that case that an open and notorious offering alone was sufficient to establish use in commerce. Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009). The court also observed that the Second Circuit, Fourth Circuit and Eighth Circuit have interpreted '45 as requiring that the services advertised in the specimen of use have actually been provided. See, Buti v. Impressa Perosa, S.R.L., 139 F.3d 98 (2d Cir. 1998); International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Mnoaco, 329 F.3d 359 (4th Cir. 2003); Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir. 2010).

The court found that '45 is clear that a service mark must both be used or displayed in the sale or advertising of services and the services must have been rendered. As there was no evidence that Couture provided his services to any customer until long after the filing of the application and issuance of the registration, the Board's order to cancel his registration was appropriate. The Federal Circuit also held that the Board correctly refused to allow Couture to amend the basis of his registration to “intent-to-use,” because the permitted substitution of one application filing basis for another, whether before or after publication of the application, must be made while the application is still pending, not after the registration has issued.

Conclusion

Although this decision was based on the definition of “use in commerce” for a service mark, it should be equally applicable to a trademark. “Use in commerce” for goods occurs when the mark “is placed in any manner on the goods or their containers or on displays associated therewith or on tags or labels affixed thereto ' and “the goods are sold or transported in commerce.” The decision should also be applicable to the specimen of use provided with the Statement of Use when an applicant seeks registration based on the applicant's intent to use the mark in commerce. It would not be enough to provide a screen shot from a website with the Statement of Use, if the applicant had not yet provided any services to customers.

Judith L. Grubner is a partner in the IP Practice Group of Arnstein & Lehr LLP and a member of this newsletter's Board of Editors. She may be contacted at [email protected].