Wednesday, March 04, 2015

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., 113 USPQ2d 2042 (Fed. Cir. 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 a service, without the actual provision of a service, is sufficient to constitute use in commerce under the Lanham Act." The Statute is 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.

Read comments and post your comment here

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.


At 9:35 AM, Anonymous Keith said...

Whether the alleged use was "in commerce" was not decided (and did not have to be decided)

At 11:30 AM, Anonymous Anonymous said...

Excellent decision by the TTAB on this one. Puts a stop to the creeping ever backward claims of use that are proliferating in the practice, at least as to services.

At 2:51 PM, Anonymous Anonymous said...

John, I agree it was obvious, but it's not so obvious to the USPTO. Here's their FAQ on the issue, using "offering" and the disjunctive "or."

What constitutes interstate commerce?

[skipping goods] With services, "Interstate commerce" involves offering a service to those in another state or rendering a service that affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

At 8:07 PM, Anonymous Anonymous said...

i think that this fact specific. Let's say you are a dentist in Washington, DC who advertises in VA and MD. Despite your advertising, your patients at the time of your 1(a) application are only in DC.The PTO would never take the position that your services are not used in interstate commerce because you are rendering them in one jurisdiction and you are advertising and could render them in another jurisdiction or to those living in another state. Very much like the Supreme Court's decision a la Ollie's BBQ in Katzenbach v. McClung. The key is that there is actual commerce in one jurisdiction with the promise of commerce in another jurisdiction or offering services to denizens of another jurisdiction. There has to be commerce for there to be interstate commerce. In this decision there was no commerce anywhere.


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