Couture v. Playdom, Inc. , 778 F.3d 1379 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
DAVID COUTURE,
Appellant
v.
PLAYDOM, INC.,
Appellee
______________________
2014-1480
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
92051115.
______________________
Decided: March 2, 2015
______________________
DAVID COUTURE, Los Angeles, CA, pro se.
DAVID MICHAEL KELLY I, Kelly IP, LLP, Washington,
DC, for appellee. Also represented by LINDA K. MCLEOD.
______________________
Before DYK, MOORE, and O’MALLEY, Circuit Judges.
DYK, Circuit Judge.
David Couture (“appellant”) appeals from a decision of
the Trademark Trial and Appeal Board (the “Board”)
2 COUTURE v. PLAYDOM, INC.
granting a petition by Playdom, Inc. (“appellee”) to cancel
appellant’s PLAYDOM service mark. We affirm.
BACKGROUND
On May 30, 2008, appellant filed an application to
register the service mark PLAYDOM pursuant to Lan-
ham Act § 1(a), 15 U.S.C. § 1051(a). As a specimen show-
ing use of the mark, appellant submitted a “[s]creen
capture of [a] website offering Entertainment Services in
commerce.” App. 39. Also on May 30, 2008, appellant had
created the website, which was hosted at
www.playdominc.com. As of May 30, 2008, the website
included only a single page, which stated: “[w]elcome to
PlaydomInc.com. We are proud to offer writing and pro-
duction services for motion picture film, television, and
new media. Please feel free to contact us if you are inter-
ested: playdominc@gmail.com.” App. 45. The webpage
included the notice: “Website Under Construction.” App.
45. No services under the mark were provided until 2010,
well after the application was filed. The PLAYDOM mark
was registered by the United States Patent and Trade-
mark Office (“PTO”) on January 13, 2009, as registration
no. 3,560,701.
On February 9, 2009, appellee filed an application to
register the identical mark—PLAYDOM. Appellant’s
registered mark was cited by the examining attorney as a
ground for rejecting appellee’s application under Lanham
Act § 2(d), 15 U.S.C. § 1052(d). On June 15, 2009, appellee
filed a petition to cancel the registration of appellant’s
mark, arguing, inter alia, that appellant’s registration
was void ab initio because appellant had not used the
mark in commerce as of the date of the application. On
February 3, 2014, the Board granted the cancellation
petition, stating that appellant “had not rendered his
services as of the filing date of his application” because he
had “merely posted a website advertising his readiness,
COUTURE v. PLAYDOM, INC. 3
willingness and ability to render said services,” and the
registration was therefore void ab initio. App. 10.
DISCUSSION
“This court reviews the Board’s legal conclusions de
novo, and the Board’s factual findings for substantial
evidence.” In re Chippendales USA, Inc., 622 F.3d 1346,
1350 (Fed. Cir. 2010) (citations omitted).
I
To apply for registration under Lanham Act § 1(a), a
mark must be “used in commerce.” 15 U.S.C. § 1051(a)(1).
A mark is used in commerce
on services when [1] it 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 ren-
dering the services is engaged in commerce in
connection with the services.
Id. § 1127; Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d
1350, 1357 (Fed. Cir. 2009) (quoting 15 U.S.C. § 1127).
Use in commerce must be “as of the application filing
date.” 37 C.F.R. § 2.34(a)(1)(i). “The registration of a mark
that does not meet the use [in commerce] requirement is
void ab initio.” Aycock, 560 F.3d at 1357 (citations omit-
ted).
“The term ‘use in commerce’ means the bona fide use
of a mark in the ordinary course of trade, and not made
merely to reserve a right in a mark.” 15 U.S.C. § 1127; see
Aycock, 560 F.3d at 1357. “[A]n applicant’s preparations
to use a mark in commerce are insufficient to constitute
use in commerce. Rather, the mark must be actually used
in conjunction with the services described in the applica-
tion for the mark.” Aycock, 560 F.3d at 1360. “Without
question, advertising or publicizing a service that the
4 COUTURE v. PLAYDOM, INC.
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 cita-
tions omitted) (emphasis added).
We have not previously had occasion to directly ad-
dress whether the offering of a service, without the actual
provision of a service, is sufficient to constitute use in
commerce under Lanham Act § 45, 15 U.S.C. § 1127. 1 In
Aycock, we stated that, “[a]t the very least, in order for an
applicant to meet the use requirement, there must be an
open and notorious public offering of the services to those
for whom the services are intended.” 560 F.3d at 1358(internal quotation marks and citation omitted). The
applicant in Aycock had not made such an “open and
notorious public offering of his . . . service to intended
customers,” and the registration was therefore void ab
initio. Id. at 1361–62 (citation omitted). But we did not
suggest in Aycock that an open and notorious public
offering alone is sufficient to establish use in commerce.
1 In support of the argument that mere offering is
sufficient, appellant cites In re Sones, 590 F.3d 1282, 1293
(Fed. Cir. 2009). But that case merely held that “the test
for an acceptable website-based specimen, just as any
other specimen, is simply that it must in some way evince
that the mark is ‘associated’ with the goods and serves as
an indicator of source.” Id. at 1288. Plaintiff additionally
cites two district court cases, Intermatic Inc. v. Toeppen,
947 F. Supp. 1227, 1239 (N.D. Ill. 1996), and Planned
Parenthood Federation of America, Inc. v. Bucci, No. 97
Civ. 0629, 1997 WL 133313, at *3 (S.D.N.Y. Mar. 24,
1997), aff’d, 152 F.3d 920 (2d Cir. 1998). These district
court cases are not binding on us, and, in any event,
neither holds that mere offering of services constitutes
use in commerce.
COUTURE v. PLAYDOM, INC. 5
And appellant does not point to any decision by the Board
which found mere offering of a service to be sufficient.
On its face, the statute is clear that a mark for ser-
vices 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 . . . .” 15 U.S.C. § 1127 (emphasis
added). This statutory language reflects the nature of
trademark rights:
There is no such thing as property in a trade-
mark except as a right appurtenant to an estab-
lished business or trade in connection with which
the mark is employed. . . . [T]he right to a particu-
lar mark grows out of its use, not its mere adop-
tion . . . .”
United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90,
97 (1918).
Other circuits have interpreted Lanham Act § 45 as
requiring actual provision of services. For example, in
International Bancorp, LLC v. Societe des Bains de Mer et
du Cercle des Etrangers a Monaco, 329 F.3d 359, 361–66
(4th Cir. 2003), the Fourth Circuit held that, absent
evidence of actual bookings made by a New York office for
the Monte Carlo casino in Monaco, the activities of the
New York office, including trade shows, advertising
campaigns, partnering with charities, mail and telephone
marketing, and soliciting media coverage, were insuffi-
cient to establish use in commerce of the “Casino de
Monte Carlo” service mark. However, apart from the
activities of the New York office, evidence that United
States citizens had gone to the casino in Monaco estab-
lished trade with a foreign nation and thus use in com-
merce. Id. at 365–66; see Sensient Techs. Corp. v.
SensoryEffects Flavor Co., 613 F.3d 754, 759–63 (8th Cir.
2010) (analogizing to service marks and holding no use in
commerce where alleged infringer issued press release,
made announcement, gave presentations, and constructed
6 COUTURE v. PLAYDOM, INC.
website with “under construction” notice where there was
no evidence of any sale or transport of goods bearing the
mark at issue); Buti v. Impressa Perosa, S.R.L., 139 F.3d
98, 100–03 (2d Cir. 1998) (promotion of Italian cafe in the
United States, including distributing promotional materi-
als offering free meals, did not constitute use in commerce
where restaurant services were only provided in Italy and
not in the United States and where it was conceded that
“the food and drink services . . . form[ed] no part of the
trade between Italy and the United States”). 2
The Board in this case and the leading treatise on
trademarks also agree that rendering services requires
actual provision of services. See McCarthy on Trademarks
and Unfair Competition § 19:103 (4th ed. Supp. 2013) (“To
qualify for registration, the Lanham Act requires that the
mark be both used in the sale or advertising of services
and that the services themselves have been rendered in
interstate or foreign commerce.” (emphasis in original)).
Here, there is no evidence in the record showing that
appellant rendered services to any customer before 2010,
and the cancellation of appellant’s registration was ap-
propriate.
II
Appellant also argues that the Board erred in failing
to allow him to amend the basis of the application to
Lanham Act § 1(b), which provides for requesting regis-
tration where “[a] person . . . has a bona fide intention,
under circumstances showing the good faith of such
person, to use a trademark in commerce . . . .” 15 U.S.C.
§ 1051(b)(1).
2 Although these other circuit cases involve in-
fringement, they address the same language in Lanham
Act § 45.
COUTURE v. PLAYDOM, INC. 7
37 C.F.R. § 2.35(b) provides procedures for substitu-
tion of a basis in an application either before or after
publication. 37 C.F.R. § 2.35(b)(1)–(2). But that provision
contemplates substitution during the pendency of an
application, not after registration. See TMEP § 806.03(j)
(Jan. 2015) (“Any petition to change the basis must be
filed before issuance of the registration.”). Therefore, the
Board did not err in not granting appellant’s request to
amend the basis of the application.
AFFIRMED