David Couture v. Playdom, Inc.


Docket No. 2014-1480

DYK, MOORE, O’MALLEY
March 2, 2015

Brief Summary: Cancellation of registered mark appropriate where registrant could not show actual use in commerce prior to registration (a mark for services is used in commerce only when both [1] ‘it is used or displayed in the sale or advertising of services and [2] the services are rendered”).

Summary: David Couture appealed from TTAB decision granting Playdom’s petition to cancel his PLAYDOM service mark. On May 30, 2008, Mr. Couture applied for a § 1(a) PLAYDOM service mark and created the single page website playdominc.com stating: “Welcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and news media. Please feel free to contact us if you are interested: playdominc@gmail.com.” The site also included the notice “Website Under Construction”. The PLAYDOM mark was registered by the USPTO on January 13, 2009. No services were actually provided under the mark until 2010. The appellee filed an application to register PLAYDOM on Feb. 9, 2009, which was rejected in view of the registered PLAYDOM mark. The appellee then filed a request to cancel the registered mark arguing that the registration was “void ab initio” because it had not been used in commerce as of the date of the application. The request was granted since “the appellant ‘had not rendered his services as of the filing date of his application’ because he had ‘merely posted a website advertising his readiness, willingness and ability to render said services’”. In the appeal, the FC reviewed the Board’s legal conclusions de novo and the factual findings for substantial evidence. The panel concluded Mr. Couture had not “actually used the mark in conjunction with the services described in the application for the mark” (“Without question, advertising or publicizing a service that the applicant intends to perform in the future will not support registration”; the advertising must instead “relate to an existing service which has already been offered to the public.” Aycock Eng’g, FC 2009) The opinion explained that the court had “not previously had occasion to directly address whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45, 15 U.S.C. § 1127.” It also explained that “[o]n its face, the statute is clear that a mark for services is used in commerce only when both [1] ‘it is used or displayed in the sale or advertising of services and [2] the services are rendered” (15 U.S.C. § 1127). Based on this and “the leading treatise on trademarks”, the panel concluded “that rendering services requires actual provision of services.” Since Mr. Couture presented no evidence of actual use before 2010, it concluded the cancellation was appropriate. The opinion also noted that any change in status from § 1(a) to § 1(b) (intent to use) must be made “during the pendency of the application, not after registration.”

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