New York Business Litigation Lawyer Blog
There has been recent discussion about what constitutes “use” of a mark when seeking trademark registration (and which applies equally to a service mark). This discussion has addressed the requirement that a proposed trademark be “used” or be “in use” when a trademark registration is filed with the United States Patent and Trademark Office (“USPTO”). Before we explore this, and a recent straight-forward case that explains this issue in an easy to understand setting, a brief background is necessary.
When filing a trademark application for Federal registration and protection with the USPTO, one must allege either “actual use” of the proposed mark in interstate commerce, or a bona fide “intent to use” the proposed mark in interstate commerce. There is no ability for a trademark applicant to reserve a trademark registration if there is neither an actual “use” or a real intent to use a particular mark or logo in connection with a commercial venture. (This is obviously different than reserving a domain name or address, which has no such requirement.) If actual “use” is alleged in the application, the applicant must show that use. If the applicant elects “intent to use” as the basis for the application, the applicant signs a statement supporting that intent and will be required to update the application once actual interstate “use” is established. It goes without saying that both the “use” and “intent to use” claims must be legitimate.
The viability of the applicant’s alleged “use” was questioned in Couture v. Playdom, Inc., where Playdom sought the cancellation of Couture’s registered service mark based on Couture’s failure to actually use the PLAYDOM mark in connection with a viable business. The proof of use submitted to the USPTO by Couture in 2008, when Couture filed his application for PLAYDOM, included a screen shot of Couture’s website, which stated that entertainment services of his company, PlaydomInc.com, would be offered. However, no actual services were offered by Couture or PlaydomInc.com until 2010.
In 2009, Playdom, Inc. filed an application for the PLAYDOM mark, which was rejected by the USPTO based on Couture’s existing registration. Playdom then sought the cancellation of Couture’s existing PLAYDOM registration claiming that in 2008, when Couture filed his application, he was not using the PLAYDOM mark in commerce sufficient to support Couture’s claim of actual use of the mark. The Trademark Trial and Appeal Board agreed, and canceled Couture’s mark, finding that in 2008, Couture did nothing more that advertise “his readiness” to provide services, but was not actually providing those services in commerce. Couture thereafter appealed the cancellation of his registration to the Federal Circuit.
The court commenced its decision by reviewing the Federal laws that govern trademarks and service marks, known as the Lanham Act. The court noted that a service mark is used in commerce when, as of the application’s filing date, it is used “‘on services 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.'” ‘”The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.'” Preparation to use a proposed mark is not “use” in commerce, the mark must be used “‘in conjunction with the services described in the application for the mark.'” Advertising of some future service (or good) can never be deemed sufficient use to support an application. The advertising must address an existing service to be included as the “use” alleged in an application.
With this lead, it is not difficult to guess the outcome. The court decided that property rights in a trademark do not exists unless the right is in connection with an established business with which the mark is used. In other words, any rights to a mark ‘”grows out of its use, not its mere adoption.'” To show use, one must actually provide the service. With this, the court found that in 2008 Couture was not using the PLAYDOM mark and affirmed the cancellation of Couture’s registration.
As in many other technical areas, a detailed explanation and understanding is required. Please let us know if we can answer any trademark question or concern.