CAFC Affirms TTAB: a Service Mark is Not in "Use" Until the Services are Rendered
The CAFC affirmed a decision of the TTAB (here) that ordered cancellation of a registration for the mark PLAYDOM for certain entertainment services. The appellate court agreed with the Board that the registration was void ab initio because Registrant David Couture had not used the mark in the rendering of the services prior to filing his underlying Section 1(a) application. Couture v. Playdom, Inc., Appeal No. 2014-1480 (Fed. Cir. March 2, 2015) [precedential].
In seeking registration based on use in commerce under Section 1(a) of the Lanham Act, an applicant must have used the mark in commerce with the listed goods or services as of the filing date of the application. Section 45 provides that a service mark is in use in commerce "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce ...."
The Board found that the appellant had not rendered the identified services as of the application filing date. He had "merely posted a website advertising his readiness, willingness, and ability to render said services." The Board therefore deemed the registration void ab initio and it granted to petition for cancellation.
The CAFC observed that it had not previously addressed directly the question of "whether the offering of as service, without the actual provision of a service, is sufficient to constitute use in commerce under the Lanham Act." It the Statute is to bear clear on its face as to the definition of "use" for a service mark: the mark must be both displayed in the sale or advertising of services and the services must be rendered.
And so the CAFC affirmed the TTAB's ruling ordering cancellation of Mr. Couture's registration.
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TTABlog note: Maybe the reason the CAFC never had the opportunity to address this issue before is because the wording of the definition of "use" in Section 45 is clear on its face.
Text Copyright John L. Welch 2015.