Are You Doing Enough to Show “Use in Commerce”

For the first time, the Federal Circuit directly addressed the “use in commerce” requirement under the Lanham Act for registration of service marks. In Couture v. Playdom, Inc. (No. 2014-1480, March 2, 2015), the Court held that mere advertising or offering of services is insufficient to support registration of a service mark…even if you are ready, willing, and able to provide such services.

Services Must Be Rendered, Good Must Be Sold/Transported for Use In Commerce

To qualify as “use in commerce” for purposes of federal registration, the services must also be rendered. Mr. Couture, unfortunately, did not begin rendering the relevant services prior to registration of the PLAYDOM mark. The Court therefore affirmed the TTAB’s cancellation of the registration on the basis that it was void ab initio since Mr. Couture had not used the mark in commerce prior to the grant of the registration. Although the Playdom involved a service mark, the rules are similar for trademarks. A mark is “used in commerce” on goods when the mark is placed on the goods, their containers, labels or tags affixed to the goods, or displays associated with the goods and the goods are sold or transported in commerce. Thus, the mere offering for sale of goods is insufficient. The goods must also be sold or transported in commerce.

Avoiding Cancellation Risk

The lesson here is clear: although the trademark registration process may appear simple, many traps and nuances exist for the unwary or uninformed, as evidenced by the Playdom case. Any doubt about actual use of a mark can be addressed by filing an application on the basis of an intent-to-use and waiting to submit the required affidavit of use once the services are rendered (or goods are sold or transported) in commerce. Otherwise, you risk cancellation of the resulting trademark registration.

Source: The full Couture v. Playdom case can be found at http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1480.Opinion.2-26-2015.1.PDF.

For more information on this topic, please visit our Trademark service page.

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