Use in Commerce
The Federal Circuit went against its own precedent and affirmed a appeal board ruling canceling the registration of the mark PLAYDOM. The decision changes the rules for determining use in commerce when registering a trademark.
David Couture applied to register PLAYDOM in 2008. His website, playdominc.com, offered writing and production services. No services were rendered until 2010. A social media game company, Playdom Inc., also applied for the mark PLAYDOM, but was rejected for likelihood of confusion with Couture's mark. The game companypetitioned to cancel Couture's mark, and the TTAB, predecessor to the PTAB, granted the cancelation.
The standard the Federal Circuit had applied in determining use in commerce was whether the trademark applicant “made an open and notorious rendering, or offering, of his services to the public.” Aycock Engineering, Inc. v. Airflite, Inc. However, in the PLAYDOM decision, the Federal Circuit found that an open offering was not enough, that use in commerce occured “when both (1) it is used or displayed in the sale or advertising of services and (2) the services are rendered.”
Although the decision is a clear change in precedent, it is a good decision for the Internet age. It is now very easy to "park" marks on a website. The use in commerce requirement was designed to prevent registration without use, and this decision is in spirit consistent with that intent.