778 F.3d 1379
Fed. Cir.2015Background
- David Couture filed a §1(a) application to register the service mark PLAYDOM on May 30, 2008, submitting a website screenshot as the specimen; the site said “Website Under Construction” and solicited contacts but showed no services being provided.
- No services under the PLAYDOM mark were actually rendered until 2010; nevertheless the PTO registered the mark on January 13, 2009 (Reg. No. 3,560,701).
- Playdom, Inc. applied to register PLAYDOM on February 9, 2009; the examiner cited Couture’s registration as a bar under §2(d).
- Playdom petitioned to cancel Couture’s registration, arguing the registration was void ab initio because Couture had not used the mark in commerce as of his filing date.
- The TTAB granted the cancellation in 2014, finding Couture had only advertised willingness to offer services (website) and had not rendered services by the filing date.
- Couture appealed; the Federal Circuit reviews Board legal conclusions de novo and factual findings for substantial evidence and affirms the cancellation.
Issues
| Issue | Plaintiff's Argument (Couture) | Defendant's Argument (Playdom) | Held |
|---|---|---|---|
| Whether offering a service (website advertising readiness) constitutes "use in commerce" under §45 for a §1(a) service-mark application | Website specimen and public offering via site show an open and notorious offering sufficient for use in commerce | Mere advertising/offerings without actual provision of services do not satisfy the statutory requirement that services be rendered in commerce | Held: No. Offering alone is insufficient; services must actually be rendered as of the application date to meet §45 use-in-commerce requirement |
| Whether the Board should have allowed amendment of basis from §1(a) to §1(b) after registration | Couture argued he should be allowed to amend to an intent-to-use basis (§1(b)) because he had bona fide intent | Playdom argued substitution is permissible only during pendency of the application, not after registration | Held: Denial was proper; substitution after registration is not allowed under PTO practice/regulations |
Key Cases Cited
- In re Chippendales USA, Inc., 622 F.3d 1346 (Fed. Cir.) (standard of review: Board legal conclusions de novo, factual findings for substantial evidence)
- Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir.) (use-in-commerce requires open and notorious public offering and actual use as of filing date)
- United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (U.S.) (trademark rights arise from use in established trade, not mere adoption)
- International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F.3d 359 (4th Cir.) (promotional activities without actual sales/bookings do not establish use in commerce)
- Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir.) (website "under construction" and publicity insufficient where no sales or transport evidence)
- Buti v. Impressa Perosa, S.R.L., 139 F.3d 98 (2d Cir.) (promotional activity in U.S. insufficient when services provided only abroad)
- In re Sones, 590 F.3d 1282 (Fed. Cir.) (website specimens must show association of mark with goods/services but do not alter requirement of actual use)