On March 2, 2015, the Federal Circuit affirmed the Trademark Trial and Appeal Board's decision granting a petition to cancel PLAYDOM service mark holding that use of a mark in commerce requires rendering of services. David Couture filed an application to register the service mark PLAYDOM pursuant to Lanham Act Section 1(a) and submitted a screenshot of a website offering Entertainment Services in commerce. PLAYDOM was registered by the PTO on Jan. 13, 2009 and on Feb. 9, 2009, Playdom, Inc. filed an application to register the identical mark PLAYDOM. PTO cited the registered mark as grounds for rejection and Playdom filed a petition to cancel the registration arguing that the service mark was not used in commerce as of the date of the application. Board granted the petition stating that the registrant "had not rendered his services as of the filing date of the application" and had "merely posted a website advertising his readiness, willingness and ability to render [the] services." On appeal, the Federal Circuit affirmed the board's decision concluding that the term "use in commerce" means the bona fide use of a mark and "advertising or publicizing a service that the applicant intends to perform in the future will not support registration" and that "rendering services requires actual provision of services." Full text of the opinion is available here.
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