TTAB Declares Registration Void Because Services Not Rendered Before Filing of Use-Based Application
The Board granted Playdom Inc.'s petition for cancellation of a registration for the mark PLAYDOM for certain entertainment services, ruling 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 Section 1(a) application. Playdom, Inc. v. Couture, Cancellation No. 92051115 (February 3, 2014) [not precedential].
In an application based on use in commerce under Section 1(a), the applicant must have used the mark in commerce with all listed goods or services as of the filing date. Section 45 provides that a service mark is in use in commerce "when its is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State." The display of the mark in the sale or advertising of the services does not alone constitute use of the service mark in commerce, absent rendering of the services.
In his discovery responses, Registrant David Couture stated that his "first customer is pending." In his discovery deposition testimony he stated that he has had one customer, to whom he rendered script-writing services in March 2010, nearly two years after his application filing date of May 30, 2008. He explained that, in filing the application, he thought that the offering of the services was sufficient to establish the he was rendering the services. [Petitioner dropped its fraud claim, perhaps because of this testimony - ed.]
The Board found from the evidence of record that Couture had not rendered any of the identified services as of the filing date of his application. 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.
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TTABlog note: The Board also considered, alternatively, petitioner's abandonment claim, in case the void ab initio ruling is reversed. It found that Couture had abandoned his mark for some, but not all, of his services.
Text Copyright John L. Welch 2014.