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Couture v. Playdom, Inc. - 778 F.3d 1379 (Fed. Cir. 2015)


To apply for registration under Lanham Act § 1(a), 15 U.S.C.S. § 1051(a), a mark must be used in commerce. § 1051(a)(1). 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, 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. 15 U.S.C.S. § 1127. Use in commerce must be as of the application filing date. 37 C.F.R. § 2.34(a)(1)(i). The registration of a mark that does not meet the use in commerce requirement is void ab initio.


On May 30, 2008, Appellant David Couture filed an application to register the service mark PLAYDOM pursuant to Lanham Act § 1(a), 15 U.S.C. § 1051(a). As a specimen showing use of the mark, Couture submitted a "[s]creen capture of [a] website offering Entertainment Services in commerce." Also on May 30, 2008, appellant had created the website, which was hosted at www.playdominc.com. As of May 30, 2008, the website included only a single page, which stated: "[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." No services under the mark were provided until 2010, well after the application was filed. The PLAYDOM mark was registered by the United States Patent and Trademark Office ("PTO") on January 13, 2009, as registration no. 3,560,701.

On February 9, 2009, Playdom, Inc. filed an application to register the identical mark—PLAYDOM. Couture's registered mark was cited by the examining attorney as a ground for rejecting Playdom's application under Lanham Act § 2(d), 15 U.S.C. § 1052(d). On June 15, 2009, Playdom filed a petition to cancel the registration of Couture's mark, arguing, inter alia, that Couture’s registration was void ab initio because Couture had not used the mark in commerce as of the date of the application. On February 3, 2014, the Board granted the cancellation petition, stating that Couture "had not rendered his services as of the filing date of his application" because he had "merely posted a website advertising his readiness, willingness and ability to render said services," and the registration was therefore void ab initio. Couture appealed.


Was the cancellation of a trademark registration proper?




Cancellation of a trademark registration was appropriate since the trademark owner only offered to provide services under the trademark on a website under construction, and there was no evidence that the trademark was actually used in providing services in commerce at the time the trademark was registered.

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