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Using a Service Mark In Commerce
To apply for a trademark or service mark registration based on use of a mark, the mark must be “used in commerce.” Section 45 of the Lanham Act, 15 U.S.C. '1127, provides that “use in commerce” in connection with services exists when the mark is “used or displayed in the sale or advertising of services and the services are rendered in commerce ' and the person rendering the services is engaged in commerce in connection with the services.” Service mark owners commonly believe that putting up a website or running print advertisements to offer their services to prospective customers is enough to fulfill the requirement that a mark must be used in commerce. However, U.S. Court of Appeals for the Federal Circuit has now ruled that advertising a service that the applicant intends to provide in the future, but is not actually providing on the date of the application, is not “use in commerce.” Couture v. Playdom, Inc., No. 2014-1480 (Fed. Cir. Mar. 2, 2015). Thus, advertising submitted to the U.S. Patent and Trademark Office with a use-based application as a specimen of use of the mark in commerce, must relate to existing services already being provided to customers. The registration for a mark that does not meet the use requirement is void ab initio (from the outset).
The issue arose in the context of a cancellation proceeding brought by Playdom, Inc., which had applied to register the mark PLAYDOM. The examining attorney stated that a prior registration for PLAYDOM, owned by David Couture, was confusingly similar to Playdom's mark. Couture's registration covered “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” in International Class 41. Playdom's Class 41 services covered “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.”
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