On December 10, 2021, the TTAB issued a precedential decision reminding trademark practitioners and applicants that service mark use requires that an applicant actually render the services recited in the trademark application; mere preparation to render the services is insufficient.
Alessandra Suuberg filed a use-based application to register the mark HAVE SOME DECENCY in connection with various charitable services. The examining attorney refused the subject application on the ground that, while Suuberg had made preparatory measures to use the mark, she never actually rendered the services before her Section 1(a) filing date.
At the time of filing the subject application, Suuberg’s website indicated that she was not yet accepting donations and was looking for volunteers to “get our organization off the ground.” Opinion, at p. 4. Still, Suuberg argued that she had engaged in sufficient “use” of the service mark because she had (1) completed a post-baccalaureate premedical program, (2) incorporated a non-profit organization, (3) applied for tax exemption status, and (4) registered a domain name. Id., at p. 5.
The TTAB affirmed the non-use refusal, reminding Suuberg that, in a use-based application under Section 1(a) of the Lanham Act, the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date. Opinion, at pp. 2-3 (citing Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015)). A mark is used in commerce “on services when  it is used or displayed in the sale or advertising of services and  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 (citing 15 U.S.C. § 1127) (emphasis added).
The Board ultimately found the Couture case instructive. Id., at p. 6. In Couture, the applicant had not rendered his entertainment services in commerce as of his filing date, but had merely advertised his “readiness, willingness and ability” to do so. Id. The United States Court of Appeals for the Federal Circuit held that “‘an 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.’” Id. (quoting Couture, 113 USPQ2d at 2042-43). The TTAB concluded that none of Suuberg’s “preparatory measures” constituted use in commerce. Accordingly, the Board deemed the application “void ab initio for non-use of the proposed mark in commerce on any of the recited services.” Id., at p. 9.