Individuals or companies looking into trademark protection often run into the phrase “Use in Commerce.” In order to obtain a trademark registration from the United States Patent and Trademark Office (USPTO), the applicant has to demonstrate use in commerce (specifically, interstate commerce, meaning more than one state is involved.) A court recently considered whether having a website up and running qualified as “use in commerce” for a service, or if it was necessary for the service to actually be rendered in order to satisfy the USPTO’s requirements.
So what does “Use in Commerce” actually mean for a service-based business?
The case in question is Couture v. Playdom, Inc. in the U.S. Court of Appeals for the Federal Circuit.
On May 30, 2008, David Couture filed a USPTO trademark application for the mark PLAYDOM in connection with the following services:
Entertainment and educational services, namely, providing advice and information for music, video and film concept and script development;[ Entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media;] Motion picture film production; Production of television programs; Script writing services; Scriptwriting services
The application was filed on an In-Use basis. We call this a 1(a) application; it means that, upon filing, the applicant is stating that the mark is in use in interstate commerce as of the filing date.
[Note: this is opposed to an Intent-to-Use or 1(b) application, wherein the applicant states that they have a bona fide intent to use the mark in interstate commerce.]
OK, so Couture stated that the mark was “in use.” How, exactly, was he using the mark? He submitted the following screen shot as his specimen of use:
In case that’s illegible, or the image doesn’t show up on your device, it states:
Playdom
Where Comedy is King
Welcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: playdominc@gmail.com.
***Website Under Construction***
The USPTO accepted the specimen, and a Certificate of Registration was issued on January 13, 2009.
A few weeks later, on February 9, 2009, a video game company, Playdom, Inc., filed an application to register an identical mark, PLAYDOM, for a variety of goods and services, including:
entertainment services, namely, providing computer games, enhancements for computer games, game applications and development tools, reviews of computer games, information relating to computer games, game enhancements and development tools via the internet, computers, mobile computers and wireless devices; providing an Internet website portal in the field of computer games and gaming; providing an Internet website portal featuring news and information regarding computer games, game enhancements and development tools, and social networking tools and opportunities; providing links to other websites that feature computer games and information regarding computer games and social networking tools and opportunities
As you might expect, Playdom, Inc.’s application was rejected due to the obvious conflict with Couture’s registration. On June 15, 2009, Playdom, Inc. filed a petition before the USPTO’s Trademark Trial and Appeal Board (TTAB; sorry for all the initials, welcome to my world) to cancel Couture’s registration on the grounds that Couture had not provided sufficient evidence of – here’s that phrase – use in commerce.
Our reliably swift legal process kicked into warp speed, and five short years later, on February 3, 2014, the TTAB rendered its decision:
The evidence of record shows that respondent had not rendered his services as of the filing date of his application. Respondent had merely posted a website advertising his readiness, willingness and ability to render said services. In view thereof, we find that respondent’s mark PLAYDOM was not in use in commerce for the listed services at the time respondent filed its application, that the registration is therefore void ab initio and the petition to cancel is granted on this ground.
Couture appealed this decision to the US Court of Appeals for the Federal Circuit.
Side note, just in case this procedural business isn’t clear: the Trademark Trial and Appeal Board is like a court that’s part of the USPTO. TTAB proceedings operate much like a lawsuit, except it’s not part of the judicial system as we typically conceive of it, because it’s part of an administrative body (the USPTO.) The US Court of Appeals, however, is part of the judicial system. The next step up from the Court of Appeals is the US Supreme Court. Got it? OK.
Well, lo and behold, on March 2, 2015, the Court of Appeals affirmed the decision of the TTAB, ordering that the USPTO cancel Couture’s PLAYDOM trademark registration, and presumably clearing the way for Playdom, Inc.’s PLAYDOM application.
What Have We Learned?
Just offering your services up to the world does not qualify as “use in commerce” for trademark purposes. You have to actually render those services in order to obtain a valid USPTO registration. Having a website, social media accounts, business cards, your name in lights – none of these actually qualify as use in commerce unless someone on the other end is actually engaging with your services.
If you’re not yet using your trademark in commerce, you may want to file a USPTO application on an Intent-to-Use basis. Filing on an In-Use basis if you don’t satisfy the “use in commerce” test will eventually get your registration cancelled, after a long and costly legal battle.
