If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Patent and Trademark Office (USPTO). Instead, the services must be actually rendered in connection with the mark for a registration to be granted.

In In re Alessandra Suuberg, SN 88234650 (TTAB December 10, 2021) [precedential] (Suuberg), the Trademark Trial and Appeal Board (TTAB) followed well-established Court of Appeals for the Federal Circuit (CAFC) precedent that the actual rendering of services is necessary for proof of use of a service mark.

In Suuberg, the applicant filed a use-based application for HAVE SOME DECENCY for “charitable fund raising” and numerous other services of a charitable nature in International Class 36. The USPTO examiner refused registration of the mark as not having been used in commerce for the services. The applicant appealed the refusal to the TTAB.

The TTAB initially referred in Suuberg to the Section 1(a) requirement of the Trademark Act, 15 U.S.C. Section 1051(a), that an applicant must use a mark in commerce “on or in connection with all the goods and services” listed in an application as of the filing date, Id. at p. 2, and referred to the definition of service mark use in Section 45 of the Act, 15 U.S.C. Section 1127, as “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. at p. 3.

It next set forth the evidence the Examining Attorney obtained from the applicant’s website during the course of prosecution of the HAVE SOME DECENCY application, which showed:

  1. A first webpage, upon which appeared “The following is placeholder text known as ‘lorem ipsum’ which is scrambled Latin used by designers to mimic real copy.”
  2. A “Donate” button on the first webpage, which led to a second webpage that indicated the page could not be found, either due to a URL error or because the page was moved or deleted.
  3. A third webpage, which stated, “We are currently looking for volunteers to help shape our programs and get our organization off the ground.”
  4. The text “We are not currently accepting donations” on the third webpage, under the heading “MAKE A DONATION.”

Id. at p. 4.

The applicant also made admissions in the prosecution of her application about her nonuse of the mark:

  1. She incorporated a nonprofit organization, filed for tax-exempt status, registered a domain name and concurrently filed her trademark application.
  2. She was building a website when she filed her application.
  3. She was not accepting donations via the website at the time of filing.
  4. She was researching the “laws and requirements” that could apply in various jurisdictions to solicitations for donations.
  5. The progress in building her organization “has necessarily been slow and cautious.”
  6. Registering her mark “… was a means to the end of building a charitable organization (and its tangible, customer-facing embodiment – its website).”

Id. at 5.

The Examining Attorney argued that Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042 (Fed. Cir. 2015), where an applicant sought to register a mark based on actual use, applied in Suuberg. That applicant’s specimen of use was a screenshot of a website, showing the mark and the services offered, and it contained the notice “Website Under Construction.” The applicant in Couture also had not rendered his services at the time his application was filed. The TTAB found the mark had not been used as of the time of filing the application, and the CAFC affirmed, stating that “preparations to use a mark in commerce are insufficient” and that the mark “must be actually used in conjunction with the services described in the application for the mark.” Suuberg at p. 6, citing Couture, 113 USPQ2d at 2042-43.

Relying on Couture and some other cases, the TTAB found none of the applicant’s “preparatory measures amounted to use in commerce” of the services in the application at the time the application was filed. Suuberg, at p. 8. It consequently held the application was void at the time of filing.

The takeaway from Suuberg and Couture? A service mark applicant must not assert its mark is in use until it has actually rendered the services in connection with the mark. The safe approach is to file an application based on an intention to use under Section 1(b) of the act, 15 U.S.C. Section 1051(b), and then convert it to an actual use filing basis after use of the mark for the rendering of the services has actually commenced.