By James Juo.

In a use-based application under Section 1(a) of the Trademark Act, the applied-for the mark must be in use in commerce with all the goods and services listed in the application as of the application's filing date. See Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015) (“To apply for registration under Lanham Act § 1(a), a mark must be ‘used in commerce.'” (citing 15 U.S.C. § 1051(a)(1))).

A mark is used in commerce “on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” Section 45 of the Trademark Act, 15 U.S.C. § 1127. “The registration of a mark that does not meet the use [in commerce] requirement is void ab initio.” Couture, 778 F.3d at 1381.

“The term ‘use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. Preparations to use a mark in commerce are insufficient to constitute use in commerce; “[r]ather, the mark must be actually used in conjunction with the services described in the application for the mark.” Couture, 778 F.3d at 1381 (quoting Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1360 (Fed. Cir. 2009)). Also, “advertising or publicizing a service that the applicant intends to perform in the future will not support registration”; instead, the advertising must “relate to an existing service which has already been offered to the public.” Aycock, 560 F.3d at 1358 (Fed. Cir. 2009)); Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023 (Fed. Cir. 2017) (“mere preparation and publication of future plans do not constitute use in commerce”).

The Trademark Trial and Appeal Board (“TTAB”) recently issued a precedential decision affirming a refusal to register the applied-for HAVE SOME DECENCY mark for charitable fundraising services because the mark was not being used in commerce as of the application's filing date. In re Alessandra Suuberg, Serial No. 88234650 (TTAB Dec. 10, 2021).

Webpages from the applicant's website used the placeholder text “lorem ipsum” used by website designers to mimic real copy; a “Donate” button that linked to an nonexistent webpage; and  had webpages stating, “We are currently looking for volunteers to help shape our programs and get our organization off the ground” and “We are not currently accepting donations.”

Relying on the Couture case, the TTAB noted:

In Couture, the applicant filed an application to register the service mark PLAYDOM under Section 1(a) of the Trademark Act, and submitted as a specimen of use a screen capture of its website, consisting of a single page that stated: “[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: [email protected].” The webpage included the notice: “Website Under Construction.” No services under the mark were provided until well after the application was filed. The Board found that the applicant “had not rendered his services as of the filing date of his application” because he had “merely posted a website advertising his readiness, willingness and ability to render said services,” and the Federal Circuit affirmed, declaring that “[A]n applicant's preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the mark.” Couture, 113 USPQ2d at 2042-43.

Holding that the applicant's incorporation of an organization, application for tax-exempt status, and registration of a domain name were “preliminary” activities that were insufficient to establish use in commerce under Section 1(a), the TTAB concluded that the application based on use in commerce pursuant to Section 1(a) of the Trademark Act is void ab initio for non-use of the proposed mark in commerce on any of the recited services.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.