Tuesday, March 03, 2015

The CAFC determines that offering a service, without rendering the service, is insufficient to support trademark registration

In Couture v. Playdom, the CAFC affirmed the TTAB, which had cancelled Couture's "Playdom" mark because Couture had “merely posted a website advertising his readiness, willingness and ability to render said services,” and the
registration was therefore void ab initio. Merely placing a proposed mark on a website without actually rendering the service in commerce is not sufficient for registration.

The appellant Couture was pro se.

Background of Playdom case:

On May 30, 2008, appellant filed an application to register the service mark PLAYDOM pursuant to Lan- ham Act § 1(a), 15 U.S.C. § 1051(a). As a specimen show- ing use of the mark, appellant submitted a “[s]creen capture of [a] website offering Entertainment Services in commerce.” App. 39. Also on May 30, 2008, appellant had created the website, which was hosted at www.playdominc.com. As of May 30, 2008, the website included only a single page, which stated: “[w]elcome to PlaydomInc.com. We are proud to offer writing and pro- duction services for motion picture film, television, and new media. Please feel free to contact us if you are inter- ested: playdominc@gmail.com.” App. 45. The webpage included the notice: “Website Under Construction.” App. 45. No services under the mark were provided until 2010, well after the application was filed. The PLAYDOM mark was registered by the United States Patent and Trade- mark Office (“PTO”) on January 13, 2009, as registration no. 3,560,701.

On February 9, 2009, appellee filed an application to register the identical mark—PLAYDOM. Appellant’s registered mark was cited by the examining attorney as a ground for rejecting appellee’s application under Lanham Act § 2(d), 15 U.S.C. § 1052(d). On June 15, 2009, appellee filed a petition to cancel the registration of appellant’s mark, arguing, inter alia, that appellant’s registration was void ab initio because appellant had not used the mark in commerce as of the date of the application. On February 3, 2014, the Board granted the cancellation petition, stating that appellant “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 ab initio. App. 10.


The issue in the case is "use in commerce":

To apply for registration under Lanham Act § 1(a), a mark must be “used in commerce.” 15 U.S.C. § 1051(a)(1). A mark is used in commerce
on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person ren- dering the services is engaged in commerce in connection with the services.
Id. § 1127; Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009) (quoting 15 U.S.C. § 1127). Use in commerce must be “as of the application filing date.” 37 C.F.R. § 2.34(a)(1)(i). “The registration of a mark that does not meet the use [in commerce] requirement is void ab initio.” Aycock, 560 F.3d at 1357 (citations omit- ted).


"Use" means real use in commerce:


“The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127; see Aycock, 560 F.3d at 1357. “[A]n applicant’s preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the applica- tion for the mark.” Aycock, 560 F.3d at 1360. “Without question, advertising or publicizing a service that the
applicant intends to perform in the future will not support registration”; the advertising must instead “relate to an existing service which has already been offered to the public.” Id. at 1358 (internal quotation marks and cita- tions omitted) (emphasis added).
We have not previously had occasion to directly ad- dress 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. § 1127.1 In Aycock, we 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.” 560 F.3d at 1358 (internal quotation marks and citation omitted).


The CAFC mentions other circuits:

Other circuits have interpreted Lanham Act § 45 as requiring actual provision of services. For example, in International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F.3d 359, 361–66 (4th Cir. 2003), the Fourth Circuit held that, absent evidence of actual bookings made by a New York office for the Monte Carlo casino in Monaco, the activities of the New York office, including trade shows, advertising campaigns, partnering with charities, mail and telephone marketing, and soliciting media coverage, were insuffi- cient to establish use in commerce of the “Casino de Monte Carlo” service mark.


McCarthy is invoked:

The Board in this case and the leading treatise on trademarks also agree that rendering services requires actual provision of services. See McCarthy on Trademarks and Unfair Competition § 19:103 (4th ed. Supp. 2013) (“To qualify for registration, the Lanham Act requires that the mark be both used in the sale or advertising of services and that the services themselves have been rendered in interstate or foreign commerce.” (emphasis in original)).
Here, there is no evidence in the record showing that appellant rendered services to any customer before 2010, and the cancellation of appellant’s registration was ap- propriate.


In passing, recall the "intent to use" provision of the Lanham Act, 1057 (c). See also Zirco v. AT&T (TTAB 1991)

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1480.Opinion.2-26-2015.1.PDF


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