Federal Circuit Clarifies "Use in Commerce" Requirement
April 10, 2015

In a precedential opinion decided on March 2, 2015, the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB’s) decision sustaining a cancellation action against Appellant’s trademark registration for PLAYDOM. For the first time the Federal Circuit directly addressed whether the offering of a service, without the actual provision of the service, is sufficient to constitute “use in commerce” under the Lanham Act § 45. Under the Lanham Act, a service mark is “used in commerce” when:

“(1) it is used or displayed in the sale or advertising of services and (2) the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” 15 U.S.C. § 1127

On May 30, 2008, the Appellant David Couture filed a use-based service mark application for the mark PLAYDOM covering a variety of entertainment-related services. On that same day Appellant created a website consisting of a single page, which stated, “Welcome to We are proud to offer writing and production services for motion picture film, television, and news media. Please feel free to contact us if you are interested:”. The web page also included the notice: “Website Under Construction.” Appellant submitted a screen shot of the web page as evidence of use, and the PLAYDOM mark registered on January 13, 2009. Appellant did not actually provide any services under the mark until 2010.

Appellee Playdom, Inc. subsequently filed an application to register the identical mark. After being refused registration based upon Appellant’s registered mark, Appellee petitioned to cancel the cited registration. Appellee argued that Appellant’s proffered use of its mark did not give rise to “use in commerce” under the Lanham Act as of the May 30, 2008 application filing date and, therefore, the underlying application was void ab initio.  

The TTAB granted the cancellation petition, noting that the Appellant “had not rendered his services as of the filing date of his application” because Appellant “merely posted a website advertising his readiness, willingness and ability to render said services.” As a result the TTAB held that the application was void ab initio, and the resulting registration should be cancelled. Appellant appealed the TTAB decision to the Federal Circuit.

Reviewing the TTAB’s legal conclusions de novo, and factual findings for substantial evidence, the Federal Circuit affirmed the decision. After considering the evidence of record, the Federal Circuit noted the Lanham Act’s clear language in stating that “a mark for services is used in commerce only when both (1) ‘it is used or displayed in the sale or advertising of services and (2) the services are rendered….’” (citing 15 U.S.C. § 1127). Because there was no evidence in the record indicating that Appellant actually rendered services to any customer before 2010, the Federal Circuit determined that the mark was not in use in commerce as of the May 30, 2008 filing date and, consequently, the registration is void. In so holding, the Federal Circuit adopted the views of several other circuits, such as the Second, Fourth and Eighth Circuits, that have similarly interpreted Lanham Act § 45 as requiring the actual provision of services. Thus, merely advertising or publicizing a service that an applicant intends to perform at some point in the future will not support a use-based registration. 

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If you have any questions or wish to discuss how the revised guidelines will impact your business, please contact an attorney in the Trademark practice group at Brinks Gilson & Lione.