Federal Circuit: Trademark Use Requires Actual Provision of Services, Not Just Advertising

By Josh Gerben, Esq.

Trademark rights in the United States are based on use of the trademark in commerce. For applications based on use (as opposed to “intent-to-use” applications), the USPTO requires that each applicant provide proof that it is using the mark for the applied-for goods and/or services. This proof must be provided in the form of a specimen, which shows the mark in use as of the first-use date listed in the application and a sworn statement that the mark is current “in use.” As trademark owners race to get the earliest possible use date, there may be many questions as to when a mark is “in use” for services (e.g. online retail store services, consulting services, legal services). According to a recent case from the Federal Circuit, trademark use in a service mark begins only after the services are actually rendered.

In Couture v. Playdom, Inc., 778 F.3d 1379, 1380 (Fed. Cir. 2015), the Federal Circuit affirmed the Trademark Trial and Appeal Board’s cancellation of PLAYDOM for entertainment services because the services were not rendered on or before the Appellee, Playdom, Inc.’s (“Playdom’s”) claimed first-use date. Playdom filed a trademark application for PLAYDOM and claimed a first-use date of May 30, 2008 for its entertainment services. To show use of the mark, Playdom submitted a screen capture of its website, which included a single page “[w]elcome 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.” The webpage included the notice: “Website Under Construction.”

The Federal Circuit held that the Lanham Act’s language was clear on its face, that a “mark is used in commerce … on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce[.]” Therefore, any proof of use submitted to the USPTO, such as an advertisement or website purportedly showing use of a trademark must “relate to an existing service which has already been offered to the public.”

This decision makes it very clear that there must be actual provision of a service to customers in order for the trademark to be “in use.” For example, if an applicant is applying for online retail services, he or she must have continuous sales of goods through the online store to real customers (not an employee, family member, or friend) before the mark is “in use.” Just listing items is not enough. Similarly, if an applicant is applying for consulting services, he or she must have performed those services for real customers. Merely offering the services to the public (and being prepared to offer them) is not enough to obtain a trademark registration. Applicants must pay close attention to these requirements – the results of submitting an invalid “proof of use” can, like in Playdom, result in the cancellation of the trademark registration.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.