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Disney’s Gaming Group Wins Trademark Case

Vanderbloemen Webpage Bio HS 10-7-13

Disney’s Playdom division, which Disney acquired in 2010, develops social-media games, but it hit a bit of a snag when attempting to register the trademark “PLAYDOM” because of a prior registration on file with the Trademark Office. Disney filed a petition to cancel that prior registration on the ground that its owner, David Couture, had not sufficiently “used” the mark as set forth in his application to the Trademark Office. The Trademark Trial and Appeal Board, which hears petitions to cancel, recently agreed, finding that Couture “had not rendered his services as of the filing date of his application,” but “had merely posted a website advertising his readiness, willingness and ability to render said services.”

There is often confusion – and even conflicting decisions and rules – about what it means to “use” a mark “in commerce” so that it is eligible for registration by the Trademark Office. The Playdom case, however, illustrates that the Trademark Office will enforce the “use in commerce” requirement, cancelling trademark registrations that it finds do not comply.