Actually Providing Services Key to Service Mark Use

In Couture v. Playdom, Inc., [2014-1480] (Fed. Cir. March 2, 2015), the Federal Circuit affirmed the cancellation of Couture’s federal registration on PLAYDOM because while on the May 30, 2008. filing date Couture had advertised the services, he did not actually perform the services until 2010 long after the Registration issued on January 13, 2009.  Although the Federal Circuit had not previously addressed the question, it found that “[o]n its face, the statute is clear.”  15 U.S.C. § 1051(a)(1) required use in commerce, and 15 U.S.C. §1127 defined use as rendering the services in commerce.  The Federal Circuit noted that the Second, Fourth, and Eighth have also indicated that actually performing the services, as opposed to merely advertising them, is required for a use-based service mark application.