Actual Use Necessary for Service Mark Registration

04/23/2015 / Jim Quinn

Actual use of a mark is a prerequisite for registration in the Patent and Trademark Office. For a trademark, it is well settled that use occurs when a product has actually been sold. For a service mark, the determination of what constitutes use has been a bit more problematic because there are no tangible items involved. There has been a disagreement about whether the mere presence of a mark to advertise the availability of services is sufficient to establish use. The Federal Circuit very recently resolved this issue.
In Couture v. Playdom, the mark, “Playdom,” was registered with a use date that was based on advertising that contained the mark. No actual services were being provided at the time of the advertising. When Disney attempted to register its mark, “Playdom,” the application was rejected because of the Couture registration. Disney challenged Couture on the basis of the fact that no services were being provided when his application was filed. The dispute ultimately reached the Federal Circuit, and the court concluded that the mere offering of a service without the actual provision of the service does not constitute use. As a result, the Couture registration was canceled, and the application filed by Disney was allowed.
With this issue resolved, mark owners would be wise to consider whether it might be more prudent to file an intent-to-use application rather than run the risk of losing a registration in the future because of a faulty use date.