A common question in trademark law is what constitutes “use” in commerce of a service mark. The answer is often complicated and fact driven. This week the Federal Circuit clarified the question in its ruling in David Couture v. Playdom, Inc.
On May 30, 2008, Couture filed an application to register the mark PLAYDOM for entertainment services, under Section 1(a) of the Trademark Act. A Section 1(a) registration requires that a mark be “used in commerce”. A mark is used in commerce “on services when  it is used or displayed in the sale or advertising of services and  the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” 15 U.S.C. §1051(a)(1). At the time of registration, Couture alleged that he was using the mark in commerce, and the mark was registered on January 13, 2009.
On February 9, 2009, Playdom Inc., (a company purchased by the Walt Disney Company) filed an application to register the same mark as Couture, PLAYDOM, and sought cancellation of Couture’s registration, on the basis that Couture had not performed the services under the mark at the time he filed a use-based application.
The evidence shows that Couture had purchased a domain name, advertised his services, but did not acquire his first costumer and actually perform any of the services he applied for until 2010, almost two years after he first filed his application. Therefore, the Trademark Trial and Appeal Board (TTAB) granted the petition for cancellation, which was affirmed by the Federal Circuit.
The Federal Circuit emphasized that the statute clearly requires that you perform the services in interstate commerce prior to filing your application. Many people file 1(a) applications and submit advertisements, websites and the like before actually performing any of the services. It may be accepted by the TTAB, but could ultimately result in losing your registration.
The bottom line is that merely advertising services is not enough to file a Section 1(a) application- services identified in a use-based application must be rendered before filing the application. If you are not performing the services in your application yet, it is best to either wait to file a 1(a) application when the services are actually rendered, or file a Section 1(b) intent to use application. If you have any questions regarding this case or trademark law in general, please call (954) 351-7474 for a consultation.