In my trademark prosecution practice, I am often asked what exactly it means to use a mark in commerce. The question seems straightforward, but in reality it is anything but.
Take the recent decision of the Trademark Trial and Appeal Board (TTAB) in the case of Playdom, Inc. v. Couture. It began in 2008, when David Couture applied to register the service mark PLAYDOM for use in connection with entertainment and educational services consisting of advice on concept and script development. Unfortunately for Couture, he filed his application based on use in commerce.
To base a service mark application on use in commerce, the applicant must have used the mark in commerce with all of the application’s listed goods or services as of the filing date. The Trademark Act provides that a service mark is used in commerce 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.
There are two equally important parts to this definition. The applicant must not only display or advertise the mark, but must also render services in connection with it. One without the other does not constitute use in commerce, so advertising a mark without rendering services does not help an application.
This was Couture’s undoing. He had not rendered his educational services when he filed his application. He mistakenly believed that simply advertising his services, without selling them, constituted enough “use in commerce” to register his service mark. He was wrong.
In 2010, the Walt Disney Co. purchased Playdom, a game development company, to develop Disney-themed social networking games for Facebook and other platforms. Shortly thereafter, Disney applied to register the PLAYDOM mark, but its application was rejected based on a likelihood of confusion with Couture’s prior PLAYDOM registration. Thus, for Disney’s PLAYDOM mark to be registered, it had to cancel Couture’s prior PLAYDOM registration.
That’s exactly what it did. When Disney moved to cancel Couture’s registration, the outcome was fairly certain. Disney argued that Couture had not used his PLAYDOM mark in commerce when he applied to register it, instead showing that all Couture had done by the time he filed his application was create a website advertising his readiness, willingness and ability to render his services. He did not actually sell his services until 2010.
The Trademark Trial and Appeal Board agreed. It cancelled Couture’s PLAYDOM mark on the grounds that mere advertising of a service mark prior to filing a service mark application was not enough to constitute use in commerce. So prospective applicants should note that just because you are willing to offer a service does not mean you are using the mark enough to register it. If you don’t, well, it’s the second mouse that gets the cheese.