Launching A Website Or Commencing Advertising By Itself Is Not Sufficient Use In Commerce Of A Service Mark
Trademark owners often mistakenly assume that they merely have to put up a website or commence advertising to gain trademark rights in a service mark used on the website or in the advertising. By its March 2015 decision in Couture v. Playdom, Inc., the Federal Circuit Court of Appeals confirmed that such activity, without actually providing the services offering on the website or in the advertising, does not constitute sufficient trademark use.
In Couture, the Federal Circuit tackled the question of “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.” Section 45 provides that a service mark is used in commerce “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State” (emphasis added). Citing decisions in the Second, Fourth and Eighth Circuits, the Federal Circuit held that Section 45 requires the actual rendering of services for there to be use in commerce.
The Couture decision highlights what can happen when a trademark owner does not do sufficient strategic planning. The trademark owner in Couture filed its application in May 2008 and registration was granted in January 2009. The trademark owner’s application was under Section 1(a) of the Trademark Act (i.e. based on actual use) even though the trademark owner had only placed the service mark at issue on a website that was “under construction” at the time of the application and registration. The trademark owner did not actually begin rendering services until March 2010. Under such circumstances, the trademark owner could have better protected his trademark rights by filing an application under Section 1(b) of the Trademark Act based on an “intent to use.”
Make Sure There Is Evidence Of A Bona Fide Intent To Use Before Filing That Intent-To-Use Application!
In the recent case of MZ Berger & Co. v. Swatch AG, the US Court of Appeals for the Federal Circuit affirmed a decision by Trademark Trial and Appeal Board (TTAB) to sustain an opposition to MZ Berger’s intent-to-use application for the trademark “iWatch.” By way of background, an intent-to-use application allows an applicant to essentially reserve a trademark so long as it has a “bona fide intent to use” the trademark in the future. The issue that has arisen in numerous cases over the years is what exactly is required to establish the requisite bona fide intent to use.
In the MZ Berger case, the evidence showed that MZ Berger only had an “aspiration” to reserve trademark rights in the iWatch name in case in decided to develop an associated watch. MZ Berger had never sold watches before, and there was no evidence that MZ Berger had ever taken any steps towards developing a watch product. The Federal Circuit therefore concluded that there was no evidence of a bona fide intent-to-use the iWatch mark.
The take-away from the MZ Berger case is that a mere subjective intent to use a trademark in the future is not a sufficient basis to establish a bona fide intent to use. Instead, if an intent-to-use application is challenged, the applicant must be able to produce objective evidence showing that concrete steps had been taken as of the date the application was filed to start commercializing the product or service to be marketed and sold using the proposed mark.