IP Law Daily, TRADEMARK—TTAB: Discuss.io loses trademark due to failure to use it in commerce, (Jul 21, 2026)

By Sherri M. Schroeder, J.D.

Evidence of promotion of its services was not enough to establish use in commerce, and its argument that it didn’t know it needed proof that it was rendering the registered services failed.

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) has affirmed the USPTO Director’s final decision that Discuss.io Inc.’s trademark registration should be cancelled under Section 16B of the Trademark Act because Discuss.io failed to demonstrate use in commerce of its standard character mark DISCUSS.IO. Although Discuss.io first argued that it was unclear that it needed to prove it was rendering the registered services in connection with the registered mark as of the application date, the TTAB found that the relevant statutes, rules, manuals, and case law were unambiguous. The Board then found that Discuss.io’s evidence of use was either evidence of promoting services but not rendering them, was indirect, or pre-dated the application. Therefore, the TTAB affirmed the Director’s decision on petition for reexamination, finding that Discuss.io failed to demonstrate use in commerce of its mark, and cancelled the registered mark in its entirety (In re Discuss.io Inc., No. 6729238 (T.T.A.B. Jul. 17, 2026)).

Discuss.io filed its use-based application for its DISCUSS.IO mark on May 12, 2021, for streaming services via a global network and providing temporary use of a web-based software application for conducting and analyzing market research, along with related services, in International Classes 38 and 42. On July 14, 2023, a third party filed a petition for reexamination, arguing that Discuss.io’s mark was not in bona fide use in commerce of any of the Class 38 or 42 services. On November 30, 2023, the Examiner issued a non-final office action finding the petition and evidence made a prima facie case that the mark was not in use in commerce as of the relevant date. On March 5, 2025, a final office action was issued with the same finding. Discuss.io appealed.

Discuss.io first argued that it was “unclear” that it needed to prove it was rendering the registered services in connection with its registered mark as of the application date. However, the TTAB noted that the record contradicted Discuss.io’s argument. The record showed that the Examiner expressly advised Discuss.io of the requirement in the non-final action and reemphasized the requirement in the final action. The Board also noted the relevant statutory provisions, the applicable trademark rules, the Trademark Manual of Examining Procedure, and the relevant case law were unambiguous. Therefore, Discuss.io was on notice that it needed to introduce evidence to support not only that it promoted the identified services in connection with the Registered Mark, but that it also rendered the registered services as of the application date.

The TTAB then turned to Discuss.io’s evidence of use, which consisted of promotional materials, consumer reference guides, articles concerning Discuss.io, and archived internet screen shots from March 18, 2016. The Board found the promotional materials or reference guides did not prove that Discuss.io was rendering the Class 38 and 42 services as of the application date, “as opposed to merely promoting the services or preparing to offer them.” Even treated as true, the articles provided were, “at best,” only indirect evidence requiring the Board to infer that Discuss.io was rendering its services as of the application date, according to the Board. “We find that the type of indirect evidence Registrant has offered is insufficient to overcome the Director’s finding of a prima facie case of nonuse,” stated the TTAB. The Board also noted that Discuss.io did not introduce “any direct evidence consisting of a declaration from someone with firsthand knowledge attesting to when Registrant began rendering its services and other pertinent information such as its number of customers or user agreements.” The Board called such evidence “important to demonstrate that any use in commerce was ‘bona fide’ and not made merely to reserve a right in the mark.”

As to the screenshot, the Board noted that even if it were to accept the archived screenshot as an accurate reflection of Discuss.io’s website on March 18, 2016, that date is more than five years before the application date. Because that evidence was not “reasonably contemporaneous” with the application date, the Board found it did not overcome the Examiner’s prima facie case of nonuse for the registered services as of the application date.

Because Discuss.io failed to demonstrate use in commerce of its registered mark for the Class 38 and 42 services as of its application date, the TTAB affirmed the Director’s decision on petition for reexamination and cancelled Discuss.io’s registered mark in its entirely under Section 16B(g) of the Trademark Act.

The Case is Registration No. 6729238.

Judge: NA.

Attorneys: Thomas E. Zutic (DLA Piper LLP) for Discuss.io Inc. Renee Servance for the USPTO.

Companies: Discuss.io Inc.

Cases: Trademark USPTO