TTAB Affirms Reexamination Decision Cancelling DISCUSS.IO Registration: Mere Offering of Services is not Use of the Mark

The Board upheld a reexamination decision cancelling a registration for the mark DISCUSS.IO for streaming services and SAAS market research services, on the ground that the registrant had failed to use the mark prior to the filing date of its underlying use-based application. The Board tossed aside registrant's claim that it was "unclear" that rendering of the services was required, rather than mere offering of the services, to constitute use of the mark. In re Discuss.io Inc., Reexamination No. 2023-100526R for Registration No. 6729238 (July 17, 2026) [not precedential] (Opinion by Judge Christen M. English).

Not only did Examining Attorney Renee Servance put the registrant on notice that evidence of the rendering of the services was required to show use, but Section 45 of the Trademark Act sets forth two requirements for establishing that a service mark is in use in commerce: (1) the mark must be used or displayed in the sale or advertising of services; and (2) the services must be rendered in commerce. See Coutoure v. Playdom, Inc., 779 F.3d 1379, 1381 (Fed. Cir. 2015).

And so, the issue on appeal was whether registrant was rendering the services – not just promoting them – as of the use-based application date.

Registrant submitted promotional materials, consumer reference guides, several articles, and a Wayback Machine screenshot dated March 16, 2016 (more than five years before the application filing date of May 12, 2021). As to the first two, they plainly did not demonstrate use of the mark in the rendering of the services.

Turning to the articles, even if the statements therein were true, this evidence was "at best, indirect evidence requiring us to infer that Registrant was rendering its services as of the Application Date." The Board observed that this type of indirect evidence "is insufficient to overcome the Director’s finding of a prima facie case of nonuse."

Finally, the Wayback Machine screenshot, even if accepted as accurate, was "not reasonably contemporaneous with the filing date of the application."

It is notable that Registrant did not introduce any direct evidence consisting of a declaration from someone with firsthand knowledge attesting to when Registrant began rendering its services and other pertinent information such as its number of customers or user agreements.

The Board concluded that Registrant’s evidence failed to demonstrate use of the mark in commerce as of the application filing date, and so it affirmed the reexamination decision. "Registrant’s Registration No. 6729238 for the Registered Mark DISCUSS.IO will be cancelled in its entirety in due course under Section 16B(g) of the Trademark Act, 15 U.S.C. § 1066b(g)."

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TTABlogger comment: One might say that registrant's evidence was "use-less."

Text Copyright John L. Welch 2026.