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 Playdom, Inc. v. Couture, 113 USPQ2d 2042 (TTAB 2015) [not precedential].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.
posted by John L. Welch @ 2/06/2014
10 comments
10 Comments:
The holding on the abandonment claim makes little sense. Under these facts, I don't see how a reviewing court could reverse of the non-use claim and at the same time deem the mark abandoned for any of the services. Wouldn't the reviewing court also review the abandonment holding?
Not sure I like the Board's reasoning on this one. So if I open a business on January 1, and spend money to advertise and promote that business, and am ready and able to provide the services at the time of opening, but it takes until March 2 to get my first customer, no "use" until March 2? But if I provide assistance to a colleague on January 1, and I continue to provide the same services to others, and then begin to advertise on March 2, my use begins on January 1? Crazy...
The statute says what it says.
Anonymous' hypo is true only if in providing the services (prior to March 2) the mark was somehow advertised to those customers. Merely providing the services does not create a use in commerce so I don't think the hypo is correct.
If I open my retail store on March 1, but no one buys anything until April 1, is that not use in commerce until April 1? I think "ready, willing, and able" to consummate a sale should be viewed as the first use date if its bona fide.
The statute doesn't say "ready, willing, and able." It says "rendered." Advertising, if extesnive enough, may establish use analogous to trademark use, which is useful in a priorty contest. But it's not technical trademark use that would support an application to register.
The statute says "used or displayed in the sale or advertising of services and the services are rendered in commerce." So if the mark is used in the rendering of the services (say a nametag on a clown who is rendering entertainment services), that is service mark use in my view. Regardless of whether there is or has been any promotion.
So who has priority? Couture's disputed use, while not technical trademark use, appears to be open and notorious which (as John noted) may establish use analogous to trademark use. He could re-file with corrected dates and services. He could also challenge Playdom, Inc.'s filing based on priority. Given their actual uses, they should be able to co-exist in their respective fields without confusion. But he's up against Disney and now he's the challenger; and without a registration blocking them, he's lost any leverage he may have had in trying to get them to enter into a co-existence agreement (without wasting any more resources).
Render's definition includes "to furnish for consideration, approval, information."
While mere advertising or promotion of a trademark on a web page is not “use in commerce,” a website page that displays the trademark, the product and a means to buy the product is considered to be “use in commerce.” See In re Sones, 590 F.3d 1282, 93 U.S.P.Q.2d 1118 (Fed. Cir. 2009).
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