Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012)

In 1998, the USPTO issued a trademark registration for the mark LENS in connection with “computer software featuring programs used of electronic ordering of contact lenses in the field of ophthalmology, optometry, and optician.” In 2008, 1-800 Contacts filed to cancel the registration, arguing that Lens.com had abandoned its mark because it never sold or otherwise engaged in the trade of computer software. The TTAB agreed and granted 1-800 Contacts summary judgment, cancelling the registration of the LENS mark.

On appeal, Lens.com argued that the “use in Commerce” requirement did not require the actual sale of goods, but that distributing software for end-users over the Internet satisfied the requirement for a mark of software. The Federal Circuit disagreed, finding that Lens.com’s software was merely a conduit through which it rendered its online retail services. In fact, Lens.com’s website made no mention of the software, nor did any consumer testimony establish that its customers were even aware that the LENS mark was being used in connection with software. The court affirmed both the summary judgment order and the cancellation of the LENS mark.