David Couture v. PLAYDOM, Inc., No. 2013-1576, -1577, 2015 U.S. App. LEXIS 3135 (Fed. Cir. Mar. 2, 2015) (Dyk, J.). Click Here for a copy of the opinion.
Couture registered the service mark "PLAYDOM" pursuant to 15 U.S.C. § 1051(a) in 2008 and submitted a "[s]creen capture of [a] website offering Entertainment Services in commerce" as evidence of use of the mark. At the same time, Couture created a website (playdominc.com) offering writing and production services for motion picture film, television, and new media. However, no services were rendered to clients until 2010.
In 2009, Appellee registered for the identical mark and filed a petition to cancel the registration of Couture's mark, arguing that the registration was void ab initio for failure to use the mark in commerce as of the date of the application. The board granted the cancellation petition and Couture appealed.
To apply for registration under the Lanham Act, a mark must be "used in commerce," meaning a "bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." For a service mark to be "used in commerce," the mark must be "used or displayed in the sale or advertising of services" and "the services are rendered." Here, the court concluded that, although services were advertised, there was "no evidence in the record" demonstrating that Couture actually rendered services to any customer before 2010. Because Couture's mark was not "used in commerce" at the time of registration, the court affirmed.
The court also rejected Couture's argument that the Board should have allowed him to amend the basis of the application pursuant to 15 U.S.C. § 1051(b)(1), to allege "a bona fide intention, under circumstances showing the good faith...to use a trademark in commerce." The court held that even though the rule provides procedures for substitution of a basis in an application, the rule "contemplates substitution during the pendency of an application, not after registration."
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