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Trademark Prosecution Mistakes Could Expose Your Trademark To Cancellation

One reoccurring question we receive in our practice is what constitutes “use in commerce” for a service mark. This question sounds simple enough, but often it involves a complicated analysis that is fact dependent. In a recent case before the Trademark Trial and Appeal Board (TTAB), David Couture (Couture), the owner of U.S. Registration No. 3560701 for the mark PLAYDOM misunderstood the law and what constituted use in commerce and as a result his trademark was cancelled. See Playdom, Inc. v. Couture, Cancellation No. 92051115 (February 3, 2014) [not precedential].

Couture applied for the mark PLAYDOM in standard character format on May 30, 2008. It registered on January 13, 2009. Couture filed a use-based application for entertainment and educational services with regard to script development for television and film production. Couture alleged that he first used the mark on May 30, 2008. Section 45 of the Trademark Act, 15 U.S.C. §1127 states that a service mark is used in commerce when the mark is used or displayed in the sale or advertising of the services and the services are rendered in commerce.

Unfortunately for Couture, Walt Disney & Co. (Disney) purchased a game development company known as Playdom. Disney was looking to expand its gaming presence online with social networks such as Facebook. On February 9, 2009 the company purchased by Disney filed an application for the mark PLAYDOM in International Classes 9, 41, 42, & 45. The application was refused because of a likelihood of confusion with Couture’s U.S. Registration for PLAYDOM. Soon thereafter, Playdom Inc. filed a cancellation action with the TTAB based on fraud on the PTO. To support its case the Petitioner (Playdom Inc.) submitted a letter written by Couture that essentially states that Couture had been advertising his services since the date of his filing, but he had not rendered the services identified in U.S. Registration No. 3560701. Petitioner argued that if this was the case, then the information contained in the trademark application was false.

The TTAB has held that services identified in a trademark application based on use must be rendered before the filing of the trademark application. See Aycock Engineering Inc. v. Airflite Inc., 560 F.3d 1350, 90 USPQ 1301, 1306 (Fed. Cir. 2009). Trademark Law requires not only the display of the mark in the advertising or sale of the service, but also the performance of the service to constitute use in commerce. The mere use of a trademark in advertising without the rendering of the services will not support a use-based application. See Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086 (TTAB 2013).

The evidence of record demonstrated that Couture had merely launched a website and advertised his services. However, he had not rendered his services as of the filing date of the trademark application. In light of the findings, the TTAB granted the cancellation petition and held that Couture’s registration for PLAYDOM was void. This result could have been avoided if Couture had instead filed an intent-to-use application. Many times, applicants are eager to file a use-based application, but in reality an intent-to-use  trademark application would be more effective, if you are unclear as to whether or not you have satisfied the “use in commerce” requirement.

Couture did not have trademark counsel assist him with the preparation and filing of the trademark application for PLAYDOM. Trademark counsel would have advised that an intent-to-use application would allow him to use his filing date as a constructive use date while having the option to request extensions of time to prove use in commerce, while maintaining the earlier filing date. See our blog post entitled What Constitutes Use In Commerce For A Service Mark, wherein we discuss how a trademark applicant is able to use its filing date of an intent-to-use application as its first use date. This is a significant advantage. Therefore, Couture would have prevailed if he had filed an intent-to-use application, since he could have used his filing date as his first use date. See our webpage entitled Simple Trademark Rules and Considerations where intent-to-use applications are discussed and other trademark basics. If you have any questions regarding trademark law or trademark applications, kindly contact one of our NY trademark lawyers for a consultation.