United States Court of Appeals 

for the Federal Circuit ______________________ 

DAVID COUTURE,

Appellant

v.

PLAYDOM, INC.,

Appellee

______________________ 

2014-1480

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

92051115.

______________________ 

Decided: March 2, 2015

______________________ 

 DAVID COUTURE, Los Angeles, CA, pro se.

DAVID MICHAEL KELLY I, Kelly IP, LLP, Washington, 

DC, for appellee. Also represented by LINDA K. MCLEOD. 

______________________ 

Before DYK, MOORE, and O’MALLEY, Circuit Judges.

DYK, Circuit Judge. 

David Couture (“appellant”) appeals from a decision of 

the Trademark Trial and Appeal Board (the “Board”) 
2 COUTURE v. PLAYDOM, INC. 

granting a petition by Playdom, Inc. (“appellee”) to cancel 

appellant’s PLAYDOM service mark. We affirm. 

BACKGROUND

On May 30, 2008, appellant filed an application to 

register the service mark PLAYDOM pursuant to Lanham Act § 1(a), 15 U.S.C. § 1051(a). As a specimen showing use of the mark, appellant submitted a “[s]creen 

capture of [a] website offering Entertainment Services in 

commerce.” App. 39. Also on May 30, 2008, appellant had 

created the website, which was hosted at 

www.playdominc.com. As of May 30, 2008, the website 

included only a single page, which 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: playdominc@gmail.com.” App. 45. The webpage 

included the notice: “Website Under Construction.” App. 

45. No services under the mark were provided until 2010, 

well after the application was filed. The PLAYDOM mark 

was registered by the United States Patent and Trademark Office (“PTO”) on January 13, 2009, as registration 

no. 3,560,701. 

On February 9, 2009, appellee filed an application to 

register the identical mark—PLAYDOM. Appellant’s 

registered mark was cited by the examining attorney as a 

ground for rejecting appellee’s application under Lanham 

Act § 2(d), 15 U.S.C. § 1052(d). On June 15, 2009, appellee

filed a petition to cancel the registration of appellant’s 

mark, arguing, inter alia, that appellant’s registration 

was void ab initio because appellant had not used the 

mark in commerce as of the date of the application. On 

February 3, 2014, the Board granted the cancellation 

petition, stating that appellant “had not rendered his 

services as of the filing date of his application” because he 

had “merely posted a website advertising his readiness, 
COUTURE v. PLAYDOM, INC. 3

willingness and ability to render said services,” and the 

registration was therefore void ab initio. App. 10. 

DISCUSSION

“This court reviews the Board’s legal conclusions de 

novo, and the Board’s factual findings for substantial 

evidence.” In re Chippendales USA, Inc., 622 F.3d 1346, 

1350 (Fed. Cir. 2010) (citations omitted). 

I 

To apply for registration under Lanham Act § 1(a), a 

mark must be “used in commerce.” 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.

Id. § 1127; Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 

1350, 1357 (Fed. Cir. 2009) (quoting 15 U.S.C. § 1127).

Use in commerce must be “as of the application filing 

date.” 37 C.F.R. § 2.34(a)(1)(i). “The registration of a mark 

that does not meet the use [in commerce] requirement is 

void ab initio.” Aycock, 560 F.3d at 1357 (citations omitted). 

“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; see 

Aycock, 560 F.3d at 1357. “[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.” Aycock, 560 F.3d at 1360. “Without 

question, advertising or publicizing a service that the 
4 COUTURE v. PLAYDOM, INC. 

applicant intends to perform in the future will not support 

registration”; the advertising must instead “relate to an 

existing service which has already been offered to the 

public.” Id. at 1358 (internal quotation marks and citations omitted) (emphasis added). 

We have 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 under Lanham Act § 45, 15 U.S.C. § 1127.1 In 

Aycock, we stated that, “[a]t the very least, in order for an 

applicant to meet the use requirement, there must be an 

open and notorious public offering of the services to those 

for whom the services are intended.” 560 F.3d at 1358

(internal quotation marks and citation omitted). The 

applicant in Aycock had not made such an “open and 

notorious public offering of his . . . service to intended 

customers,” and the registration was therefore void ab 

initio. Id. at 1361–62 (citation omitted). But we did not 

suggest in Aycock that an open and notorious public 

offering alone is sufficient to establish use in commerce. 

1 In support of the argument that mere offering is 

sufficient, appellant cites In re Sones, 590 F.3d 1282, 1293 

(Fed. Cir. 2009). But that case merely held that “the test 

for an acceptable website-based specimen, just as any 

other specimen, is simply that it must in some way evince 

that the mark is ‘associated’ with the goods and serves as 

an indicator of source.” Id. at 1288. Plaintiff additionally 

cites two district court cases, Intermatic Inc. v. Toeppen, 

947 F. Supp. 1227, 1239 (N.D. Ill. 1996), and Planned 

Parenthood Federation of America, Inc. v. Bucci, No. 97 

Civ. 0629, 1997 WL 133313, at *3 (S.D.N.Y. Mar. 24, 

1997), aff’d, 152 F.3d 920 (2d Cir. 1998). These district 

court cases are not binding on us, and, in any event, 

neither holds that mere offering of services constitutes 

use in commerce.

 
COUTURE v. PLAYDOM, INC. 5

And appellant does not point to any decision by the Board 

which found mere offering of a service to be sufficient. 

On its face, the statute is clear that a mark for services is used in commerce only when both [1] “it is used or 

displayed in the sale or advertising of services and [2] the 

services are rendered . . . .” 15 U.S.C. § 1127 (emphasis 

added). This statutory language reflects the nature of 

trademark rights: 

There is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which 

the mark is employed. . . . [T]he right to a particular mark grows out of its use, not its mere adoption . . . .”

United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 

97 (1918). 

Other circuits have interpreted Lanham Act § 45 as 

requiring actual provision of services. For example, in 

International Bancorp, LLC v. Societe des Bains de Mer et 

du Cercle des Etrangers a Monaco, 329 F.3d 359, 361–66 

(4th Cir. 2003), the Fourth Circuit held that, absent 

evidence of actual bookings made by a New York office for

the Monte Carlo casino in Monaco, the activities of the

New York office, including trade shows, advertising 

campaigns, partnering with charities, mail and telephone 

marketing, and soliciting media coverage, were insufficient to establish use in commerce of the “Casino de 

Monte Carlo” service mark. However, apart from the 

activities of the New York office, evidence that United 

States citizens had gone to the casino in Monaco established trade with a foreign nation and thus use in commerce. Id. at 365–66; see Sensient Techs. Corp. v. 

SensoryEffects Flavor Co., 613 F.3d 754, 759–63 (8th Cir. 

2010) (analogizing to service marks and holding no use in 

commerce where alleged infringer issued press release, 

made announcement, gave presentations, and constructed 
6 COUTURE v. PLAYDOM, INC. 

website with “under construction” notice where there was

no evidence of any sale or transport of goods bearing the 

mark at issue); Buti v. Impressa Perosa, S.R.L., 139 F.3d 

98, 100–03 (2d Cir. 1998) (promotion of Italian cafe in the 

United States, including distributing promotional materials offering free meals, did not constitute use in commerce 

where restaurant services were only provided in Italy and 

not in the United States and where it was conceded that 

“the food and drink services . . . form[ed] no part of the 

trade between Italy and the United States”).2 

The Board in this case and the leading treatise on 

trademarks also agree that rendering services requires 

actual provision of services. See McCarthy on Trademarks 

and Unfair Competition § 19:103 (4th ed. Supp. 2013) (“To 

qualify for registration, the Lanham Act requires that the 

mark be both used in the sale or advertising of services 

and that the services themselves have been rendered in 

interstate or foreign commerce.” (emphasis in original)). 

Here, there is no evidence in the record showing that 

appellant rendered services to any customer before 2010, 

and the cancellation of appellant’s registration was appropriate. 

II

Appellant also argues that the Board erred in failing 

to allow him to amend the basis of the application to 

Lanham Act § 1(b), which provides for requesting registration where “[a] person . . . has a bona fide intention, 

under circumstances showing the good faith of such 

person, to use a trademark in commerce . . . .” 15 U.S.C. 

§ 1051(b)(1). 

2 Although these other circuit cases involve infringement, they address the same language in Lanham 

Act § 45.

 
COUTURE v. PLAYDOM, INC. 7

37 C.F.R. § 2.35(b) provides procedures for substitution of a basis in an application either before or after 

publication. 37 C.F.R. § 2.35(b)(1)–(2). But that provision 

contemplates substitution during the pendency of an 

application, not after registration. See TMEP § 806.03(j) 

(Jan. 2015) (“Any petition to change the basis must be 

filed before issuance of the registration.”). Therefore, the 

Board did not err in not granting appellant’s request to 

amend the basis of the application. 

AFFIRMED