# A Website Is Not a Service: Couture v. Playdom and the Rendering Requirement

> The Federal Circuit holds that advertising a service you have not yet performed cannot support a use-based service-mark registration, voiding the PLAYDOM mark ab initio.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/couture-v-playdom-use-in-commerce-services/


In *Couture v. Playdom, Inc.*, 778 F.3d 1379 (Fed. Cir. 2015), No. 2014-1480 (decided March 2, 2015), the U.S. Court of Appeals for the Federal Circuit affirmed the cancellation of a service-mark registration that rested on nothing more than a webpage. Writing for a panel that included Judges Moore and O'Malley, Judge Dyk held that a mark is "used in commerce" for services only when two things are true at once: the mark is used or displayed in the sale or advertising of the services, and the services have actually been rendered. David Couture had done the first and not the second, and that gap was fatal. The registration was void from the day it issued.

## At a glance

- **Case:** *Couture v. Playdom, Inc.*, 778 F.3d 1379 (Fed. Cir. 2015), No. 2014-1480.
- **Decided:** March 2, 2015; panel of Dyk, Moore, and O'Malley (opinion by Judge Dyk).
- **Mark at issue:** PLAYDOM, applied for as a service mark for writing and production services for motion picture film, television, and new media. It registered on January 13, 2009 as Reg. No. 3,560,701.
- **The filing:** Couture filed a use-based application under Lanham Act Section 1(a) on May 30, 2008, supported by a screenshot of a single-page website reading, in substance, "We are proud to offer writing and production services."
- **The problem:** No services under the mark were rendered to any customer until 2010, well after the application date.
- **The holding:** A service mark is used in commerce only when the mark is used in the sale or advertising of services *and* the services are rendered. Mere advertising of services not yet performed does not qualify.
- **Disposition:** The Trademark Trial and Appeal Board's cancellation was affirmed; the registration was void ab initio, and the Board did not err in refusing to let Couture amend his filing basis after registration had issued.

## The webpage that was only an offer

The facts are spare, which is part of what makes the case such a clean statement of doctrine. In May 2008, Couture stood up a website at playdominc.com. It was one page. It announced that the enterprise was "proud to offer writing and production services for motion picture film, television, and new media" and invited interested parties to make contact by email. On the strength of that page, Couture filed a use-based application to register PLAYDOM and submitted the screenshot as his specimen.

What the page did not show, because it did not yet exist, was any service actually performed for a customer. Couture did not render writing or production services under the PLAYDOM mark to anyone until 2010. The website, in other words, was an advertisement for a business that was open in aspiration but not yet in operation. Meanwhile, a different company, Playdom, Inc., filed its own application for the identical mark in February 2009 and then petitioned to cancel Couture's registration, arguing it was void because the mark had not been used in commerce as of the application date.

## Two conditions, not one

The statutory text did the decisive work. Lanham Act Section 45, 15 U.S.C. Section 1127, defines when a mark is "used in commerce." For services, the definition has two clauses joined by "and": the mark must be "used or displayed in the sale or advertising of services," and "the services [must be] rendered in commerce." The Board read those clauses as cumulative. So did the Federal Circuit.

Couture's argument leaned on the first clause in isolation. He had advertised the services; the statute lists "advertising" as a qualifying use; therefore, he reasoned, he had used the mark in commerce. The court rejected the move as a misreading of the conjunction. Advertising satisfies one of the two requirements, not both. Without rendered services, the advertising clause describes a use that the statute does not complete. The panel was candid that it had "not previously had occasion to directly address whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce." It read the statute against the grain of its own precedent in *Aycock Engineering, Inc. v. Airflite, Inc.*, 560 F.3d 1350 (Fed. Cir. 2009), which had said that preparations to use a mark are not use and that advertising must "relate to an existing service which has already been offered to the public." It also invoked the broader principle that trademark rights flow from use rather than from the mere claiming of a mark, quoting *United Drug Co. v. Theodore Rectanus Co.*, 248 U.S. 90, 97 (1918), for the proposition that "the right to a particular mark grows out of its use, not its mere adoption." Decisions from the Second, Fourth, and Eighth Circuits, and McCarthy's treatise, pointed the same way.

The opinion also disposed of the authorities Couture pressed. He relied on *In re Sones*, 590 F.3d 1282 (Fed. Cir. 2009), but that case addressed only what makes a website specimen acceptable, not whether an offer alone is use. His two district court cases, *Intermatic Inc. v. Toeppen* and *Planned Parenthood Federation of America, Inc. v. Bucci*, were not binding and in any event did not hold that mere offering constitutes use. The line the statute draws is between offering to perform and actually performing, and Couture was on the wrong side of it when he filed.

## Void ab initio, and no second chance to amend

Because the mark had not been used in commerce on the application date, the registration was void from inception. This is the harsh arithmetic of a defective use-based filing: it is not that the registration becomes vulnerable or loses some ancillary benefit, as can happen with later defects. It never validly existed. There was no priority date to salvage and no presumption to fall back on.

Couture tried to rescue the situation by asking to amend his filing basis from Section 1(a) (use in commerce) to Section 1(b) (bona fide intent to use). Had he filed under Section 1(b) in the first place, the absence of current use would have been no obstacle; intent-to-use applicants are expected not to have used the mark yet. But Couture had not, and by the time he sought to switch, the registration had already issued. The Federal Circuit resolved the point on the text of the rule rather than on any weighing of equities. 37 C.F.R. Section 2.35(b) sets out procedures for substituting a basis before or after publication, but the court read it to contemplate substitution "during the pendency of an application, not after registration," citing TMEP Section 806.03(j): "Any petition to change the basis must be filed before issuance of the registration." The Board therefore did not err. The opinion treats the point briefly, but its practical weight is large: the filing basis is a decision with consequences, and once a registration issues, a use-based filing that should have been an intent-to-use application cannot be repaired by amendment.

## Open questions

- **How much rendering is enough?** *Couture* holds that zero rendered services fails, but it does not quantify the threshold. The case did not require the court to say whether a single bona fide performance suffices or whether something more is needed.
- **What counts as a "rendered" service across modern business models?** For platforms, beta programs, and pre-launch offerings that blur advertising and delivery, the line between offering and rendering can be genuinely contested.
- **How far does the bar on post-issuance basis amendment reach?** The court rested on 37 C.F.R. Section 2.35(b) and a TMEP provision rather than on a full analysis of the rule's scope, so the treatment is thin even though the result is categorical.
- **How does this interact with foreign-registration and Madrid bases?** Applications grounded in Sections 44 or 66(a) do not require pre-registration use, and the boundary between those routes and Section 1(a) continues to matter.

## Implications

- **Choose the filing basis deliberately.** If services have not yet been rendered under the mark, file under Section 1(b) intent-to-use, not Section 1(a). A premature use-based filing is not a head start; it is a void registration.
- **A specimen must show rendered services, not promises.** A webpage that merely advertises or "offers" services is not, by itself, proof of use in commerce for service marks.
- **Void ab initio means no priority.** A defective use-based registration confers nothing: there is no date to claim and no presumption to invoke against later filers.
- **Do not count on amending the basis later.** A petition to change the basis has to be filed before the registration issues. After that, the amendment route is closed.
- **Audit pre-launch portfolios.** Startups that filed use-based applications before going live should reassess exposure; a competitor can raise void-ab-initio as a cancellation ground.

## Frequently asked questions

**Did advertising the services count for anything?**
It satisfied only one half of the statutory test. Section 1127 requires both that the mark be used in the sale or advertising of services and that the services be rendered in commerce. Advertising alone, with no services performed, does not meet the "used in commerce" definition for a service mark.

**Could Couture have fixed the problem by switching to an intent-to-use application?**
Not after the registration issued. He asked to amend his basis from Section 1(a) to Section 1(b), but the Federal Circuit held that 37 C.F.R. Section 2.35(b) contemplates substitution of a basis during the pendency of an application, not after registration, so the Board did not err in refusing. Filing under Section 1(b) at the outset would have avoided the defect.

**What does "void ab initio" mean for the registrant?**
It means the registration is treated as never having been valid because the use-in-commerce requirement was not met on the application date. The registrant gets no priority benefit from it, and the registration is subject to cancellation.

## Authorities and sources

- *Couture v. Playdom, Inc.*, No. 2014-1480 (Fed. Cir. Mar. 2, 2015) (slip opinion, court's own site): https://www.cafc.uscourts.gov/opinions-orders/14-1480.opinion.2-26-2015.1.pdf
- *Couture v. Playdom, Inc.*, No. 2014-1480, case page (Federal Circuit): https://www.cafc.uscourts.gov/3-02-2015-14-1480-couture-v-playdom-inc-opinion-14-1480-opinion-2-26-2015-1/
- 15 U.S.C. Section 1127, definition of "use in commerce" (Cornell LII): https://www.law.cornell.edu/uscode/text/15/1127
- 15 U.S.C. Section 1051, application for registration (Cornell LII): https://www.law.cornell.edu/uscode/text/15/1051
- 37 C.F.R. Section 2.35, substitution of basis (Cornell LII): https://www.law.cornell.edu/cfr/text/37/2.35
- *Playdom, Inc. v. Couture*, Cancellation No. 92051115 (TTABVUE docket): https://ttabvue.uspto.gov/ttabvue/v?pno=92051115&pty=CAN
- Gerben IP, *Federal Circuit: Trademark Use Requires Actual Provision of Services, Not Just Advertising*: https://www.gerbenlaw.com/blog/federal-circuit-trademark-use-requires-actual-provision-of-services-not-just-advertising/
- National Law Review, *Offering of Services Alone Insufficient Basis for Section 1(a) Trademark Application*: https://natlawreview.com/article/offering-services-alone-insufficient-basis-1a-trademark-application-david-couture-v