Client Alert - Merely Offering Goods and Services Is Not Sufficient to Support a Trademark Application Based on Use
Service Mark Applications Based on Use
Advertising that you are ready, willing and able to render a service under a mark is not sufficient to support a use-based application to register a service mark. In addition to offering a service, you must actually be providing the service in commerce for this purpose.
The Court of Appeals for the Federal Circuit for the first time definitively addressed this issue in David Couture v. Playdom, Inc., 113 USPQ2d 2042 (TTAB 2015).
In 1998, David Couture filed an application to register the word mark PLAYDOM for various entertainment services claiming use of the mark in commerce, and filing as a specimen of use a single webpage offering the services (shown below). The registration was issued 11 years later in January 2009. Couture believed that offering the services was sufficient to claim use, but he did not actually provide any of the services until 2010.
In February 2009, a social network game developer named Playdom (later acquired by The Walt Disney Company) applied to register the identical word mark. After Couture’s registration was cited against that application, Playdom petitioned to cancel Couture’s registration on the ground that it was void from the beginning because Couture had not provided the services on or before the filing date of his application.
Section 45 of the Trademark Law known as the Lanham Act provides that a mark is used in commerce
on services when  it is used or displayed in the sale or advertising of services and  the services are rendered in commerce . . . . (Emphasis added).
The Court of Appeals for the Federal Circuit, affirming a decision of the Trademark Trial and Appeal Board, held that “rendering services requires actual provision of services,” not just offering them, and it cancelled Couture’s registration.
Trademark Applications Based on Use
The foregoing case dealt with service marks. As for use-based applications to register trademarks, the rules are similar.
Section 45 of the Trademark Law provides that a mark is used in commerce
on goods when  it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, . . .and  the goods are sold or transported in commerce . . . .(Emphasis added).
Thus, using a trademark for goods requires the actual sale or transportation of the goods in commerce, not just offering them for sale.
Intent to Use Applications
Of course, it is possible to apply to register a service mark or trademark based on a claim that the applicant has a bona fide intention to use the mark in commerce. But, before that application will mature to registration, the application must be amended to allege use, and the same use rules will then apply.
For further information, contact William M. Borchard of our Trademark Practice Group.
A printable copy can be downloaded here.