March 2015

Looking Ahead

On March 2, 2015, in Couture v. Playdom, Inc., No. 14-1480 (Fed. Cir. Mar. 2, 2015), the Federal Circuit affirmed the Board’s granting of a petition by Playdom, Inc. (“Playdom”) to cancel David Couture’s PLAYDOM service mark.  In its petition, Playdom argued that Couture’s mark was void
ab initio because Couture had not used the mark in commerce as of the date of the application.  Noting that it had “not previously had occasion to directly address whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45,” slip op. at 4, the Federal Circuit stated that, “[o]n its face, the statute is clear that a mark for services is used in commerce only when both [1] ‘it is used or displayed in the sale or advertising of services and [2] the services are rendered,’” id. at 5 (quoting 15 U.S.C. § 1127).  After explaining that other circuits had interpreted Lanham Act § 45 as requiring actual provision of services, the Federal Circuit held that the record did not show that Couture rendered services to any customer before the date of the application and that cancellation of Couture’s registration was appropriate.

Read the full summary in the next edition of Last Month at the Federal Circuit.