“Use in Commerce” Requires Actual, Not Intended, Use

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Playdom LogoWhen applying to register a trademark or service mark, one of the key requirements is that the applicant has used or intends to use the mark in commerce. The Federal Circuit recently considered what is sufficient “use in commerce” for purposes of obtaining a service mark in Couture v. Playdom, Inc., No. 2014-1480 (March 2, 2015).

Background

Playdom filed an application to register the service mark PLAYDOM on May 30, 2008 and submitted a specimen that purported to demonstrate that the mark had actually been used in commerce. Specifically, Playdom submitted a screen shot of the only page on its website (www.playdominc.com), which stated “[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.” The webpage also indicated that it was still under construction. The USPTO registered the mark on January 13, 2009. However, Playdom did not actually provide any services under the mark until 2010.

On February 9, 2009, Couture filed his own application to register the identical mark—PLAYDOM. Not surprisingly, the examining attorney rejected Couture’s mark based on Playdom’s mark. In response, Couture filed a petition to cancel Playdom’s mark, arguing that Playdom had not actually used the mark in commerce when it said it did.

The Board granted the petition, finding that Playdom had not provided services as of the filing date of the application because it had only indicated that it was willing to provide services then, not that it actually had provided services.

The Federal Circuit affirmed the cancellation on the same grounds.

Analysis

Under the Lanham Act, a service mark is used in commerce when it (1) is used or displayed in the sale or advertising of services and (2) the services are rendered in commerce. 15 U.S.C. § 1051(a)(1). And, when claiming that the mark has been used in commerce, it must have actually been used in commerce as of the application’s filing date.

In analyzing this provision, the Federal Circuit noted that “used in commerce” means actual use, and not preparations. If an applicant submits advertising relating to the services as proof of use, the advertising must relate to existing services that have already been offered to the public, and not services that the applicant intends to perform in the future.

Because there was no evidence in the record that Playdom actually rendered any services before 2010, the Board correctly cancelled Playdom’s 2008 registration.

Conclusion

Small things can make a difference when applying to register trademarks and service marks. Counsel and applicants need to be aware of these requirements and accurately complete the applications. In circumstances like these, applicants can indicate on the application that they have a bona fide intent to use the mark in the future, which allows for the application to proceed.

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One response to ““Use in Commerce” Requires Actual, Not Intended, Use

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