Lens.Com, Inc. v. 1-800 Contacts, Inc.
686 F.3d 1376
Fed. Cir.2012Background
- Lens.com obtained the ’334 Registration for LENS in connection with computer software for ordering contact lenses.
- 1-800 Contacts challenged the registration by alleging abandonment for nonuse of software as a tradable good.
- Board granted summary judgment that Lens.com’s software is incidental to services and not a separate good in trade.
- Board canceled the ’334 Registration; Lens.com appealed to the Federal Circuit.
- Court reviews de novo whether use in commerce exists for software and whether abandonment was proven, applying prior case law on goods in trade.
- Record shows Lens.com does not sell software independently and no public awareness links LENS to Lens.com’s software.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Use in commerce for software | Lens.com: software over internet constitutes use in commerce. | 1-800 Contacts: software is incidental and not a tradable good; no public association with LENS. | Use in commerce not shown; software not a separate good in trade. |
| Abandonment for nonuse | Lens.com argues nonuse not proven as abandonment is a factual question. | 1-800 Contacts: nonuse with intent not to resume shown; three-year nonuse presumption applies. | Board properly found abandonment evidence and canceled registration. |
| Proper grounds and record considered | Specimens alone insufficient; argument about examination grounds. | Board properly relied on the entire application file, not just specimens. | Record supports Board’s use and abandonment conclusions; no error in evidentiary grounding. |
Key Cases Cited
- Shareholders Data, Inc. v. Quotron Sys., Inc., 495 F.2d 1360 (D.C. Cir. 1974) (goods in trade must have independent value apart from services)
- Compute-Her-Look, Inc., 176 U.S.P.Q. 445 (TTAB 1972) (reports transmitted as part of service lack independent marketable value)
- Bank of America National Trust v. Savings, 118 U.S.P.Q. 165 (TTAB 1958) (forms/tools used in rendering services are not goods in trade)
- Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001) (distribution of software over internet can satisfy use in commerce with public association)
- In re MGA Entm’t Inc., 84 U.S.P.Q.2d 1743 (TTAB 2007) (software/information that is integral to services may not be a separate good)
- Odom's Tenn. Pride Sausage, Inc. v. FF Acquisition, L.L.C., 600 F.3d 1343 (Fed. Cir. 2010) (summary judgment standard; review of agency decision de novo)