In Couture v. Playdom, Inc. decided yesterday, the applicant filed a use-based application for the service mark PLAYDOM, and submitted as a specimen his webpage that provided:
Welcome to PlaydomInc.com. We are proud to offer writing and production services for motion pictures film, television, and new media. Please feel free to contact us if you are interested: email@example.com.The website included this disclaimer: Website Under Construction.
The applicant did not actually render any offered services until well after the application was filed. The registration eventually issued. Thereafter, a competing service provider sought to register the same service mark PLAYDOM for the same writing and production services. The competing service provider filed a petition to cancel the registered PLAYDOM mark, arguing that the applicant had not done anything other than advertise and offer his service at the time the application was filed. The cancellation was allowed by the TTAB and, following appeal to the Federal Circuit, the TTAB's cancellation was affirmed.
The Federal Circuit observed that it had not previously addressed whether the mere offering of a service, without actual rendering of the service by the application filing date, is sufficient to constitute "use in commerce under Lanham Act §45." But the Court now confirms that use in commerce of a service mark requires both that the mark be publicly "used or displayed in the sale or advertising of services" and that the services must actually be provided. The bad news is that the first applicant lost his registration because he had not provide the service by the application filing date. The double bad news is that he lost his registration to a direct competitor.