In February, the Trademark Trial and Appeal Board (TTAB) voided a trademark registration because the mark in question was not used in the rendering of services prior to the filing of the applicant's use-based application (see Playdom, Inc. v. Couture, Cancellation No. 9205115, February 3, 2014). Although the applicant was using the mark on his website at the time he filed his use-based trademark application, he had not actually provided the services advertised on the site to any customers at the time of filing.
This case serves as a good reminder that the "use in commerce" requirement means that you must have actually sold, transported, or rendered all of the different types of goods and services covered by your application in order to claim that the mark is in use – either at the time of filing a use-based trademark application, or when submitting a Declaration of Use. It is not enough to advertise that your products and services are for sale.
This article appeared in the February 2014 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.