Advertising Services Is Not Use In Commerce

Your website for your new service has gone live! You are building momentum for you launch in a few weeks by advertising your services. You know you need to protect your intellectual property so you seek federal registration of your new trademark. Is that new website or other adverting materials sufficient to show “use in commerce” as required to secure a federal registration for use?

Seems like it could, right? Unfortunately, the answer is NO.

In Couture v. Playdom, Inc., the Federal Circuit held that the use of a mark on a website to offer services is not use in commerce sufficient to support an actual-use service mark application. As a result, the Court affirmed the Trademark Trial and Appeals Board’s (“TTAB”) cancellation of the mark.  The PTO granted the petition because, at the time of Playdom’s service mark registration, it had not rendered any services under the mark, but merely advertised those services on a website.

This case is a great example of the unnecessary risk in prematurely applying for an actual use mark, rather than an intent-to-use mark.

To apply for registration under Lanham Act § 1(a), a mark must be “used in commerce,” which requires – as to services – that, as of the filing date, the mark (1) 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. § 1127; Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009).

The Federal Circuit, in this case, explained the fundamental proposition that “[w]ithout question, advertising or publicizing a service that the applicant intends to perform in the future will not support registration;” the advertising must instead “relate to an existing service which has already been offered to the public.” Id. at 1358 (internal quotation marks and citations omitted) (emphasis added).

So what does all of that mean? Advertising for a service you have not yet begun to offer to the public is not enough. To successfully register a service mark, services associated with the mark must have been provided prior to registration. Do not use advertising for a service set to launch in 3 weeks or a month. The mark is not in use in commerce as necessary to secure federal trademark registration. It may not be obvious when filing but if there is ever a challenge you could lose your protections as Couture did.

Any doubt about actual use should lead to the filing of an intent-to-use application; it’s not worth the risk of losing your mark. An intent-to-use application would have given Couture the benefit of the earlier filing date when the mark was actually used in commerce and issued as an actual use mark. See 15 U.S.C. § 1057(c).

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