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Federal Circuit Upholds TTAB’s Finding of Abandonment of Lens.com’s LENS Mark

On August 3, 2012, the US Court of Appeals for the Federal Circuit issued a decision in the case Lens.com, Inc. v. 1-800 Contacts, Inc.  In the case, the Federal Circuit upheld a decision of the USPTO Trademark Trial and Appeal Board (“TTAB”) granting a motion for summary judgment and ordering the cancellation of Lens.com’s registration for the mark LENS.

In January 2001, Lens.com filed a trademark application for the mark LENS in connection with “retail store services featuring contact eyewear products rendered via a global computer network.”  On September 18, 2001, the USPTO attorney reviewing the application issued an Office Action refusing the application because it was merely descriptive of the identified services, and there was a substantial likelihood of confusion with a previous registration of the mark LENS, by Wesley-Jessen Corporation, in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.”

On March 18, 2002, Lens.com initiated a cancellation proceeding against Wesley-Jessen’s registration.  Prior to the resolution of this cancellation proceeding, Wesley-Jessen assigned its LENS trademark rights to Lens.com.

In September 2008, 1-800 Contacts filed a cancellation proceeding alleging that Lens.com fraudulently obtained or alternatively abandoned the LENS mark “because Lens.com never sold or otherwise engaged in the trade of computer software.”  1-800 Contact then filed a motion for summary judgment of the abandonment claim, which the TTAB granted, finding that Lens.com’s “software is merely incidental to its retail sale of contact lenses, and is not a ‘good in trade” that is “solicited or purchased in the market place for [its] intrinsic value.”

On appeal, Lens.com argued that the Board erred in granting summary judgment because “’use in commerce’ does not require the actual sale of the goods.”  Lens.com further argued that the “distribution of Software for end-users over the Internet satisfies the ‘use in commerce’ jurisdictional predicate’ for a mark for software.

1-800 Contacts countered that Lens.com abandoned the mark by failing to offer software itself as a good to consumers.  1-800 Contacts continued, “incidental items that an applicant uses in conducting business . . . as opposed to items sold or transported in commerce for use by others are not ‘goods in trade.”

The Federal Circuit began its analysis by pointing out that the actual sale of goods is not required to satisfy the “use in commerce” requirement.  It continued, however, by discussing the precedent that “an article does not qualify as a good in trade when that article is simply the conduit through which [the applicant] renders services.”  Here, the Federal Circuit concluded that Lens.com’s software is “merely the conduit through which it renders its online services.”  The Federal Circuit, therefore, upheld the TTAB’s finding that Lens.com had abandoned its mark.

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