Federal Circuit affirms TTAB in Lens.com case: Internet/website cookies did not constitute offering ‘software’ in commerce

Last week, the Court of Appeals for the Federal Circuit (CAFC) ruled on an appeal of a TTAB decision in Lens.Com, Inc. v. 1-800 Contacts, Inc. (11-1258; August 03, 2012).

Lens.com acquired a USPTO trademark registration for LENS for use with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” Procedural history: “1-800 Contacts filed Cancellation No. 92,049,925 alleging that Lens.com fraudulently obtained or alternatively abandoned the mark LENS under the ’334 Registration because Lens.com never sold or otherwise engaged in the trade of computer software. 1-800 Contacts filed a motion for summary judgment on the claim of abandonment, which the Board granted.”

The CAFC sustained the ruling of the TTAB. In short, “Lens.com’s software is merely the conduit through which it renders its online retail services. Lens.com’s customers utilize the website (and thereby the software associated therewith) to avail themselves of Lens.com’s services.”  As a result, Lens.com does did not use the LENS trademark in commerce for software. And so the CAFC upheld the Board’s ruling on Summary Judgment that the LENS mark had been abandoned: “Even viewing the evidence in a light most favorable to Lens.com, there is no genuine issue of material fact in this case that Lens.com’s customers actually associated the mark LENS with software.”

For the full text of the opinion, see: http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1258.pdf

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