The US Court of Appeals for the Federal Circuit recently addressed whether an applicant has “used a trademark in commerce” if the applicant offered a service, but did not actually provide that service, under the mark.

In Couture v. Playdom, Inc., David Couture filed a use-based US trademark application for the mark PLAYDOM covering writing and production services in 2008. Couture submitted with his application a page from his website to demonstrate current use of his mark. Although Couture did not actually provide any services under the PLAYDOM mark until 2010, nearly two years after he filed the application, Couture’s website nonetheless satisfied the US Patent and Trademark Office’s (USPTO) requirements for demonstrating use of the applied-for mark. As a result, in 2009, the USPTO issued Couture a certificate of registration for the PLAYDOM mark.

In February 2009, Playdom, Inc. filed a trademark application for the identical mark PLAYDOM, but it was refused by the USPTO based upon a likelihood of confusion with Couture’s registration.

Playdom filed a petition to cancel Couture’s registration with the Trademark Trial and Appeal Board (TTAB), arguing that Couture’s registration was void because Couture was not actually using the mark when he filed the underlying application.

The TTAB ruled in favor of Playdom and granted its petition to cancel Couture’s registration. The TTAB held that Couture had not sufficiently used the PLAYDOM mark in commerce as of his application’s filing date because Couture “merely posted a website advertising his readiness, willingness and ability to render…services,” but had not actually rendered such services.

Couture also sought to retroactively amend his application to be based on his intent-to-use, rather than use. The TTAB refused to amend the application, finding that only an application, and not a registration, can be amended to be based on an intent-to-use instead of use. Couture then appealed the TTAB’s decision to the Federal Circuit.

The Federal Circuit held that “without question, advertising or publicizing a service that the applicant intends to perform in the future will not support a registration.”

Even though the USPTO accepted Couture’s website as demonstrating use of the mark, the court found that under the statute, advertising “must relate to an existing service which has already been offered to the public.” The court upheld the TTAB’s refusal to amend Couture’s application to be based on an intent-to-use and thus, affirmed the TTAB’s ruling to cancel Couture’s registration.

Had Couture originally filed his application based on an intent-to-use, his priority rights to the mark would have dated back to the date when he filed his application (although he would not have obtained a registration until after he began offering his services). Instead, because his “use” was insufficient, Couture was left without a registration to the PLAYDOM mark, and Playdom ultimately obtained senior rights to the mark. This decision reminds applicants to make sure they are actually rendering services under an applied-for-mark as of the date they are claiming first use of such mark.