On Monday, the Federal Circuit issued its decision in Couture v. Playdom, clarifying that use in commerce for a service mark requires that the services be rendered before a registration can be granted. To obtain a federal trademark registration, the applicant must prove (among other things) that it is using the mark in commerce. It is well established that use of a service mark requires that the mark be displayed in connection with an offering of services. The Federal Circuit had not previously addressed whether offering services was alone sufficient, or whether rendering those services was also required. Playdom clarifies that a mark for services is used in commerce only when (1) it is displayed in connection with offering services and (2) the services are rendered.

Appellee Playdom, Inc., petitioned to cancel appellant David Couture’s registration for PLAYDOM, arguing that Couture’s mark was void ab initio because Couture had not used the mark in commerce as of the date of the application. Couture filed to register PLAYDOM in 2008, claiming use of the mark in commerce. The specimen Couture submitted with the PLAYDOM application was labeled a “screen capture of [a] website offering Entertainment Services in commerce.” It was a webpage stating that Couture offered writing and production services, and included an email address. The webpage also included the notice “Website Under Construction.” Based upon this submission, the PLAYDOM mark was registered in 2009. There was no evidence in the record that Couture rendered services under the PLAYDOM mark prior to 2010.