TTABulator

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

Coach Services, Inc. v. Triumph Learning, Inc., decided by Court of Appeals for the Federal Circuit on February 21, 2012.

For the full opinion of the Court of Appeals for the Federal Circuit, see here.

For the TTAB’s earlier ruling, see here.

Brief Summary:

In September of 20102, the TTAB dismissed an opposition by Coach, the maker of handbags and accessories, against the mark COACH for educational software, holding that opposer’s likelihood of confusion and dilution claims failed. Opposer’s alternative argument that the applicant’s mark was merely descriptive was also dismissed by the Board after a finding that applicant sufficiently demonstrated acquired distinctiveness.

On appeal, the CAFC affirmed the finding dismissing the likelihood of confusion and dilution claims, but remanded regarding the acquired distinctiveness claim based on an evidenciary decision.

As a preliminary matter, the Court found that the Board properly struck opposer’s annual reports submitted as testimony because they were not submitted in accordance with the Board’s rules and were not otherwise authenticated. Opposer argued that because its annual reports from 2001 to 2008 were available online, the Board should have accepted the printed versions of the reports. Regarding the likelihood of confusion claim, the Court agreed that while the marks are identical in sound and appearance they have different meanings and commercial impressions when applied to the respective goods. After weighing the DuPont factors, the Court agreed with the Board “that customer confusion is not likely between the parties’ respective COACH marks.”

Regarding the claim of dilution, the Court agreed that the dilution claim fails because oppose did not introduce sufficient evidence to demonstrate that its mark was famous for purposes of dilution prior to the filing of applicant’s application.

Regarding the Board’s finding that applicant’s use of COACH is descriptive but has acquired distinctiveness, the Court agreed that it is descriptive. But the Court found that the Board erred regarding the handling of evidence of Applicant’s documents showing use of its mark before July 2003, and remanded to the Board to “the weight, if any, to be given to pre-July 2003 documents in the absence of any testimony authenticating them or addressing their use. The Board must then assess whether these apparent gaps in Triumph’s proofs impact the Board’s determination that the mark was in continuous use during any relevant period.”

In a “per curiam” order issued today and without any discussion of the merits, the Court of Appeal for the Federal Circuit (CAFC) affirmed the TTAB’s refusal to register the COLOR ME MINE mark.

See order here (PDF): http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1377.pdf

Related post:  FEDERAL CIRCUIT HEARS TWO APPEALS FROM TTAB

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