Addressing for the first time whether the offering of a service was sufficient “use in commerce” under the Lanham Act, the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) grant of a petition for cancellation for a trademark registration, concluding appellant’s application was void ab initio.  David Couture v. Playdom, Inc., Case No. 14-1480, 778 F.3d 1379 (Fed. Cir., Mar. 5, 2015) (Dyk, J.).

The appellant, David Couture, filed an application for the mark PLAYDOM under § 1(a) of the Lanham Act based on prior use in commerce. Mr. Couture submitted a screenshot of his website, www.playdominc.com, which “offered” film and television services. The website stated it was “under construction.”  Mr. Couture did not actually provide film and television production services under his mark until 2010, nearly two years after he filed his use-based application.

Meanwhile, in 2009 Playdom, Inc. (Playdom) filed an application for PLAYDOM.  The examining attorney rejected Playdom’s application based on Couture’s registration for PLAYDOM.  Playdom then filed a petition to cancel Couture’s registration, arguing that Couture’s registration was void ab initio because Couture had not used the PLAYDOM mark in commerce.  After the TTAB agreed with Playdom, this appeal followed.

Relying heavily on its prior decision in Aycock v. Eng’g, Inc. v. Airflite, Inc., (IP Update, Vol. 12, No. 4), the Federal Circuit affirmed the cancellation.  Under the Lanham Act, a service mark is used in commerce only when “both it is used or displayed in the sale or advertising of services and the services are rendered.”  Because appellant had only offered a service (but not rendered it) at the time he filed his use-based trademark application, his registration was void ab initio.

Practice Note:  When in doubt, file an intent-to-use application or amend the basis of an already filed trademark application from prior use in commerce (§ 1(a)) to intent-to-use in commerce (Section 1(b)).  Once the mark is registered, however, the original basis of the registration cannot be changed.