Kelly IP Partners Linda McLeod and David Kelly scored a recent victory before the Federal Circuit. The Federal Circuit affirmed the Trademark Trial and Appeal Board’s decision granting Playdom Inc.’s petition to cancel a blocking registration on the ground that the underlying application was void ab initio. The appellant, David Couture, had filed a use-based trademark application to register the PLAYDOM mark for various entertainment and educational services. The TTAB found that appellant had not rendered any services under his mark as of the filing of his use-based application. Rather, appellant “had merely posted a website advertising his readiness, willingness and ability to render said services,” and thus the registration was held void ab initio.
On appeal, the Federal Circuit affirmed the TTAB, holding that a mark is used in commerce for registration only when it is both used or displayed in the sale or advertising of the services, and the services are actually rendered under the mark. The Federal Circuit’s decision is precedential because the Court had “not previously had occasion to directly address 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.” The decision can be accessed viewed here and is discussed at length in the below Law360 article.