For the first time, the Federal Circuit directly addressed the “use in commerce” requirement under the Lanham Act for registration of service marks. In Couture v. Playdom, Inc. (No. 2014-1480, March 2, 2015), the Court held that mere advertising or offering of services is insufficient to support registration of a service mark…even if you are ready, willing, and able to provide such services. To qualify as “use in commerce” for purposes of federal registration, the services must also be rendered. Mr. Couture, unfortunately, did not begin rendering the relevant services prior to registration of the PLAYDOM mark. The Court therefore affirmed the TTAB’s cancellation of the registration on the basis that it was void ab initio since Mr. Couture had not used the mark in commerce prior to the grant of the registration.
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In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charity devoted to changing the world one random act of kindness at a time. Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.