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Couture v. Playdom, Inc., 778 F.3d 1379, 113 U.S.P.Q.2d 2042

Facts

David Couture, the holder of the registered service mark PLAYDOM, appealed a decision from the Trademark Trial and Appeal Board that granted Playdom, Inc.'s petition to cancel his mark. Couture filed for registration of the mark on May 30, 2008, submitting a website as evidence of use. However, the website only advertised his services and was labeled 'Under Construction.' No actual services were provided until 2010, which led to the Board's conclusion that Couture had not used the mark in commerce as required by the Lanham Act.

Issue

Did David Couture establish that he had used the PLAYDOM mark in commerce prior to the filing of his application?

Whether appellant established that he had used the PLAYDOM mark in commerce prior to the filing of his application.

Rule

Under the Lanham Act, a service mark must be used in commerce to qualify for registration. This means the mark must be displayed in the sale or advertising of services, and the services must be rendered in commerce. Mere preparations to use a mark or advertising without actual provision of services do not satisfy the use requirement.

Analysis

The court analyzed whether Couture's actions met the 'use in commerce' requirement. It noted that the website he created did not demonstrate actual service provision, as it was merely an advertisement without any services rendered until 2010. The court emphasized that the law requires both advertising and actual service delivery for a mark to be considered used in commerce.

The registration of a mark that does not meet the use [in commerce] requirement is void ab initio. Aycock, 560 F.3d at 1357 (citations omitted). '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.' Id. at 1358.

Conclusion

The court affirmed the Board's decision, concluding that Couture failed to establish use of the PLAYDOM mark in commerce, rendering the registration void ab initio.

The Board granted the cancellation petition, stating that 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,' and the registration was therefore void ab initio. App. 10.

Who won?

Playdom, Inc. prevailed in this case because the court found that Couture did not meet the necessary legal standard for establishing use of his service mark in commerce. The court's reasoning was based on the clear requirement that a mark must be actively used in conjunction with the services it represents, which Couture failed to demonstrate.

Playdom, Inc. prevailed because the court found that Couture had not rendered any services under the PLAYDOM mark before the application date, thus failing to meet the use in commerce requirement necessary for trademark registration.

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