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.