Merely Advertising Your Services Is Not Enough to File A Use-Based Application
The Trademark Trial and Appeal Board (Board) granted Playdom Inc.’s petition for cancellation of registration for the mark PLAYDOM for certain entertainment services on the basis that the registration was void because Registrant David Couture had not performed the entertainment services under the mark prior to filing his Section 1(a) trademark application for federal registration. Playdom, Inc. v. Couture, Cancellation No. 92051115 (February 3, 2014).
In an application based on use in commerce under Section 1(a), an applicant must have used the mark in commerce with all listed goods or services as of the filing date. A service mark is used in commerce “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State.” (Section 45 of the Trademark Act.) Advertising of a service alone without performance of that service will not support registration.
Prior to the filing date of his application, Registrant had purchased the domain www.playdom.com and published a website that advertised his entertainment services. However, he never actually performed the entertainment services prior to filing his application, and his first (and only) customer was nearly two years after his application filing date. Nevertheless, Registrant obtained a certificate of registration.
The Board held that merely posting a website advertising Registrant’s “readiness, willingness and ability to render said services” without actually rendering the entertainment services is not enough to show that the mark is being used in commerce.
Why is this important to owners of service marks? If you want to federally register your mark, you need to actually perform the services under the mark in interstate commerce prior to filing your application.
To prove use in commerce, trademark owners will typically submit advertising or promotional material depicting the service being offered under the mark, e.g. a screenshot of a website offering massage services under the mark SERENITY. This material may be accepted by the Trademark Office and a certificate of registration for SERENITY issued even if the trademark owner never actually performed the “massage services.”
Although a non-issue at first, this can later result in the loss of the federal registration of SERENITY if challenged, as was the case with PLAYDOM. It can even lead to a fraud claim if the trademark owner filed a used-based application knowing that the services had not yet been performed.
Bottom line, if you are not using your service mark in commerce, you need to wait to file a used-based application until you have performed the services. Or you can file a Section 1(b) intent-to-use application on the grounds that you intend to use the mark in commerce within six months and up to three years (with granted extensions).