March 2015
In Couture v. Playdom Inc.,[1] the Federal Circuit confirmed that services under a service mark must have actually been provided as of the filing date of a § 1(a) application. Advertisement that the applicant was ready, willing and able to provide the services is insufficient to support a use based application.
In the precedential decision, the Federal Circuit affirmed the TTAB’s grant of a petition for cancellation of the mark PLAYDOM.[2] In 2008, Couture filed an § 1(a) application for the PLAYDOM mark for entertainment services including, inter alia, advice and information for film concept and script development.[3] On the day of filing, Couture also created the website www.playdominc.com. The website contained only one page which read: “[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: [email protected].”[4] Couture submitted a screen capture of the website as a specimen accompanying his application. The PTO issued Couture’s registration in January 2009.[5] However, Couture did not actually render his entertainment services until 2010.[6]
Shortly thereafter, Playdom Inc. filed its own application for the PLAYDOM mark.[7] Playdom Inc. received a § 2(d) rejection based on Couture’s registration.[8] Playdom Inc. subsequently filed a petition to cancel, arguing that Courture’s registration was void ab initio because it had not been supported by actual use of the service mark in commerce.[9] The TTAB agreed, noting that Couture had not rendered his services as of the filing date of his application, and granted the petition to cancel.[10]
The Federal Circuit explained that § 1(a) specifically states that a service mark is used in commerce when (1) it is used or displayed in the sale or advertising of the service and (2) the services are rendered in commerce.[11] Registrations that do not meet these requirements are void ab initio. Advertising or publicizing services that the applicant intends to provide at a later date do not support a use-based registration.[12] Though Couture had used the mark in advertising his services, he had not actually provided his services at the time his application was filed. His application and subsequent registration thus did not meet both requirements under § 1(a).
When preparing an application for a service mark, it is necessary to ensure that services under the mark have actually been rendered in interstate commerce. If the applicant has only advertised its services to date, a § 1(b) application is warranted.
Authored by Katherine E. Muller