by Dennis Crouch
David Couture v. Playdom (Fed. Cir. 2015)
In what may become an important trademark decision, the Federal Circuit has ruled that trademark registration requires actual use in commerce. 15 U.S.C. 1051. For goods, this means that the goods must actually be sold or transported in commerce. For services, this means that services must actually be rendered in commerce.
Here, Couture’s PLAYDOM mark is being challenged by Playdom, Inc. Couture’s commercial use of the mark including registration of the domain [www.playdominc.com] in a way that includes the offer of writing and video production services and a contact address. Couture did eventually provide services, but only well after the mark was actually registered.
Because no services had been provided as of the registration application date, the mark was deemed void ab initio and therefore cancelled.
Intent to use: Trademark attorneys know that applications can be filed prior to use under the provisions allowing for an “application for a bona fide intention to use [ITU] trademark.” The statute has particular provisions for that approach, including a timeline for proving actual use. 15 U.S.C. § 1051(b)(1). Here, Courture failed to follow that approach and the Federal Circuit here affirmed the Federal Circuit rule barring substitution of an ITU application after registration.
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One of the traditional benefits of trademark law is that it has fewer disastrous pitfalls for the uninformed (as compared with patent law). This case here will catch some unwary in its net.
Suppose, knowing that smoking is banned in most poker rooms, I invent a device that combines a poker hole-card cover and chewing tobacco container and it looks like a giant casino chip. Suppose I want to call my device the “Chip’n’dip.” I just checked, TESS says it’s available.
If I put up a website for ordering the Chip’n’dip(tm) and nobody buys one, does this ruling mean I can’t get a registered trademark on the name?
Moreover, does that mean that GiantPokerCompany can look at my webpage, knock off my product, give it away to poker rooms as promotional gifts and then *they* can get a registered trademark on “Chip’n’dip” because their knocked-off products were “transported in commerce”? Because that seems blatantly unfair to the little guys…
SlotGuy,
The short answer, I think, is “yes.” Being ready to do business just isn’t the same as ‘doing business.”
That said, the scenario you painted is a little unrealistic. If you are open to do business and are selling a reasonably priced good, you’ll make at least a few sales before the competition can mobilize, even if you’re a small business.
Key to remember: trademark law has at least two policy considerations. One, of course, is to protect the investment a company makes in a mark. Second, equally or more important, is to identify the source of goods for consumers.
If your competition is selling goods under the mark before you, there is a reasonable argument that the relevant public would think your competition is identified with the goods, not you.
The shorter answer: correctly file an Intention to Use trademark application.
The definition of “use” in commerce is not the same for services as it is for goods. The latter must actually be sold, but the former may consist of a website where no transactions have yet taken place under certain circumstances. The PTO recently issued updated guidelines for registering marks for websites.
An in-use application, or conversion of an intent-to-use application to an in-use application, requires swearing to the date of first use of the mark anywhere, and the date of first use in interstate commerce. The client won’t understand what the PTO means by those dates when you ask for them and will likely give you the wrong ones unless you clearly explain the rules which are scattered about the TMEP.
Thanks Flann.
Lann Flippincott: Don’t you have that backwards? The case says services must actually sold.
Yeah, I’m not sure about that, for either goods or services. I’m willing to believe. Cite please?
The requirements of the service mark specimen are tied to “use in commerce” as you can see below. I see no requirement that “render” means a financial transaction for services (unlike for goods). I think the “website under construction” was fatal in Playdom and indicated that the services could not yet be “rendered.”
TMEP
901.03 “billiard parlor services satisfy the “use in commerce” requirements, where the record showed that applicant’s billiard parlor services were advertised in both Kansas and New York, 221 USPQ 1020; automotive service station located in one state was rendering services “in commerce” because services were available to customers traveling interstate . . . , 140 USPQ 216; Offering services via the internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website” 42 USPQ2d 1430;
904, 1303(a): “actual use of the mark in commerce in connection with an existing service is required and that mere preparations to use a mark sometime in the future does not constitute use in commerce” 90 USPQ2d 1301 [this is an important distinction, see TMEP for examples of “preparations” – the services must be available, not in the works, and this may be where the confusion lies and the problem with a website under construction]
1301.04: “. . . proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in ADVERTISING the services, which encompasses marketing and promotional materials” 56 USPQ 2d 1471
1301.04(a): “The specimen must show the mark as actually used by the applicant in selling or advertising the services. 37 CFR 2.56(b)(2). Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus . . . ”
1301.04(e): “The requirement that a mark must be ‘used in the sale OR ADVERTISING of services’ to be registered as a service mark is clear and specific . . . . The minimum requirement is some direct association between the offer of services and the mark sought to be registered” 177 USPQ 456
Goods:
903.02: “The date of first use in commerce is the date when the goods were first sold or transported . . . ” 90 USPQ2d 1301. Lots more if anyone wants me to provide the links but goods are more straightforward. I require my clients to provide me with an invoice to prove date of first sale of the goods under the mark.
Yesterday I posted a long response with the TMEP and case cites but it must be lost in the ether. I’ll post again if requested.
In this case, the fact that the website was “under construction” was likely fatal to the claim. “Rendering” of a service mark does not have to include an actual transaction; the service must simply be available for immediate deployment.
The TMEP makes clear that advertising of a service under a mark, by itself, is “use in commerce.”
Dear Colleagues,
The Sensitive Application Warning System (SAWS) was developed in 1994 to allow patent examiners to alert leadership when a patent might issue on a sensitive matter. blah blah blah the USPTO has decided to retire this program.
Peggy
This email is being sent to all Examiners and SPEs in the Technology Centers.
Hey 6, you pulling our collective legs?
If not, any word on when “SAWS-II: The Revenge Of SAWS” becomes active?
link to uspto.gov
Apparently no legs were pulled.
Thanks for the continued updates in Trademark as well as in Patent Dennis
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