If I Allowed a Service Mark to Be Cancelled Can I Apply Again
On March 2, 2015, the U.Due south. Court of Appeals for the Federal Circuit issued its first-ever ruling addressing use requirements for registering service marks. The court held that offering a service, without the actual rendering of that service, is non "employ in commerce" for the purposes of registering a service mark nether Lanham Human action § 45, fifteen U.s.a.C. § 1127. Considering the bidder misunderstood this requirement, his registration is now invalid, and another business is positioned to register the mark. David Couture v. Playdom, Inc., No. 14-1480.
Groundwork
On May 30, 2008, David Couture (Appellant) created a one-folio website at
On February 9, 2009, only a calendar month after Appellant's mark registered, Playdom, Inc. (Appellee) filed an awarding to register the identical mark PLAYDOM for services including "entertainment services." The Examining Attorney rejected the awarding considering of Appellant's identical registered marking, citing Lanham Human action § 2(d), fifteen U.Southward.C. § 1052(d).
The Appellee filed a petition to cancel Appellant's registration of PLAYDOM on June 15, 2009, contending that the mark had not been used in commerce since the date of application and was thus void from the start. The Trademark Trial and Appeal Board (the TTAB) agreed and canceled Appellant'south mark on February 3, 2014, because Appellant had only "posted a website advertising his readiness, willingness and ability to render said services" simply failed to really render any services by the filing appointment of the application.
Electric current Determination
In a conclusion issued on March two, the Federal Circuit upheld the TTAB's decision to cancel Appellant's mark. The Federal Circuit highlighted the Lanham Human activity's "use in commerce" requirement, found at Lanham Act § 1(a), 15 U.Due south.C. §§ 1051(a)(1); 1127 (emphasis added).
A mark is used in commerce on services when [ane] information technology is used or displayed in the sale or advertizing of services and [2] the serviced are rendered in commerce, or the services are rendered in more than than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connexion with the services.
The Federal Excursion acknowledged that previous district court decisions focus on the outset part of the "utilise in commerce" requirement merely notes that the wording of the statute is articulate, requiring both (one) use of the marking in sale or advertising and (two) the actual rendering of the service. The Federal Circuit went on to quote the Supreme Court's determination in United Drug five. Theodore Rectanus Co., "[T]he right to a item mark grows out of its utilize, not its mere adoption…." 248 U.S. 90, 97 (1918). The Federal Circuit too antiseptic that a marking'southward utilize in commerce must be "every bit of the application filing date" and a "bona fide use of a mark in the ordinary course of trade, and not made only to reserve a correct in the mark." 37 C.F.R. § 2.34(a)(i)(i); 15 U.S.C. § 1127. Finally, the Federal Circuit noted that the TTAB and McCarthy on Trademarks and Unfair Competition concur that "rendering services requires actual provision of services."
Ultimately, Appellant's unabridged trademark registration was canceled. The Court also took the time to emphasize that while Appellant may take liked to convert his ane(a) registration into a one(b) "intent to use" application, under the present regulations, conversion from registration to application is non permitted. See 37 C.F.R. § two.35(b). Had Appellant filed a one(b) application, he would take retained priority over the Appellee and may not have faced a complete loss of his trademark registration.
IMPACT OF Conclusion
While other courts have had reason to dominion on the amount of activity necessary to support a claim of "employ" for the purposes of a trademark or service mark registration, the Federal Circuit's decision in this arena is the most of import. The Federal Circuit has exclusive appellate jurisdiction over decisions coming from the TTAB, making its ruling binding on the Trademark Office.
Prior to this week'southward ruling, there was no "brightline rule" for when an entity's services were eligible to merits rights to a service marking. Many practitioners may have advised that only advertising a service nether a mark—without actually rendering the service—was sufficient to satisfy the "use in commerce" requirement for registration. Still, the Federal Circuit has now clarified that 1(a) "bodily use" applications crave that the applicant already have rendered the services claimed in the registration at the fourth dimension of the application. Those who file i(a) applications without meeting both of the requirements for employ or display in the sale or ad of services and rendering of services adventure cancellation of their registrations. Services must be actually rendered in interstate commerce.
SPECIAL CONSIDERATIONS FOR SERVICE MARKS
This ruling provides applied advice and guidance for filing service mark registrations. The Federal Excursion emphasizes that "use in commerce" is a two-part requirement and reminds registrants that the 2d part of the statute, which requires the rendering of a service, cannot be overlooked. The use requirements for a service mark registration are clearly different from the employ requirement for goods. Previous rulings explain that merely shipping products in interstate commerce constitutes "utilise" for the purpose of filing an application for a trademark, and no bodily sale is required. Nevertheless, bona fide commercial utilise is required for both trademarks and service marks to maintain the registration and to garner trademark rights for enforcement purposes. Just the different nature of products compared to services results in a dissimilar practical bear on.
THE TAKEAWAY
The takeaway from this example is that, equally a practical matter, there is a higher standard for "use in commerce" when applying for a service marker registration as compared to a trademark registration. While the procedures are the aforementioned, the TTAB only recognizes "use in commerce" for a service mark where there is a sale of the services listed in the registration. Registrations for service marks filed prior to the appointment of bodily sales are vulnerable to assault in a cancellation proceeding or every bit a counterclaim in an infringement lawsuit. Past contrast, goods tin can encounter that test just past shipment in interstate commerce; buy is not required.
Service mark owners also should mind the cautionary tale taught by Couture five. Playdom Inc.: the Examining Attorney is not infallible. The Appellant's application was canonical by the Examining Attorney despite non-apply, likely giving him reason to believe he was the legitimate senior user of the mark. Examining Attorneys at the USPTO are non arbiters of "use in commerce" and simply estimate the merit of a trademark or service mark awarding based on the information at their immediate disposal. While ownership of a valid trademark or service mark registration gives rise to a presumption of validity, this example reminds brand owners that there are ways to overcome that presumption.
If yous currently take an unpublished 1(a) application pending before the Trademark Office and have doubts most whether the services were rendered prior to filing, y'all may amend your application to a 1(b) basis by filing a verified statement that y'all had a bona fide intention to employ the mark in commerce in connexion with the services as of the filing date. See TMEP § 806.03(c). If your pending awarding is already published, or if you ain a registration for a service mark and accept doubts regarding its validity in lite of the recent decision, you may need to consult with a trademark attorney to determine the best form of activity for your item state of affairs.
NEW PRACTICES MAY BE WARRANTED
Every bit Appellant was not rendering services at the fourth dimension he submitted his service mark application, information technology would have been advisable that he file a 1(b) "intent to use" awarding. The 1(b) awarding costs a little more than, and a brand owner may exist hesitant to file an awarding that suggests the marker is non yet in use when it has taken substantial steps toward starting to offer services, but that is why the i(b) application exists. Under this ruling, a restaurant that has purchased ingredients, printed menus, decorated its dining room, hired employees, advertised its services and opened its doors would however not have the "apply" necessary to back up a 1(a) awarding. In this example, "apply" occurs when the get-go customer really pays for a meal. If a department ane(a) application is desired, so the brand owner should document actual sales of the services as of the application date.
Those engaged in services should be hesitant to insist on a ane(a) application claiming "bodily apply" unless they are already providing services under the marking. Once the mark registers, it is likewise late to cure the defect, and so service mark applicants must "apply it or lose information technology."
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Source: https://www.jdsupra.com/legalnews/use-it-or-lose-it-service-mark-regist-45952/
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