Lens.com, Inc. v. 1-800 Contacts, Inc.
Lens.com, Inc. v. 1-800 Contacts, Inc. | |
---|---|
Court | Kimberly Ann Moore |
Case opinions | |
Majority | Linn, joined by a unanimous court |
Laws applied | |
15 U.S.C. § 1064, 15 U.S.C. § 1127 (Lanham Act) |
Lens.com, Inc. v. 1-800 Contacts, Inc., 686
The case was important because it clarified the Federal Circuit's view of the "use in commerce" requirement for trademarks when a non-traditional use of the trademark was employed. This had implications for trademark holders who held "computer software"-related intellectual property and sold goods over the internet. This also affected trademark holders who used their marks in non-traditional manners,[2] or those whose marks were inappropriately described in the trademark filing.[3]
Background of the case
The parties were both competing retailers of
In 2008, the
Lens.com's motion for a reconsideration of its decision was denied by the TTAB later in 2010, and the USPTO shortly thereafter proceeded to cancel the trademark.[5] Lens.com appealed the cancellation decision to the Federal Circuit Court, which issued its decision on August 3, 2012.
Decision
The Court found in favour of the appellee/plaintiff, 1-800 Contacts, affirming the decision of the TTAB below it.
The fact that Lens.com did not sell software was not contested in the appeal. Thus, under 15 U.S.C. § 1127(1)(B), the only way in which Lens.com could prove it was using the trademark and had not abandoned it would be to prove that its software was "transported in commerce." Citing In re Shareholders Data, 495 F.2d 1360, 1361 (CCPA 1974), the Court found that an article would not qualify as such when that article is "simply the conduit through which [the applicant] renders services."[1] Further, it recalled the "well-established" principle from Shareholders Data that when an article "has no independent value apart from the services, such article is not likely to be an independent good in trade."[1]
Despite a glut of precedent regarding "goods in trade" used in conjunction with services, the Court noted the lack of precedent in the internet services context on the issue of whether such service providers' software was an "independent good in commerce", and therefore properly the subject of a trademark in its own right, or "merely incidental" to the services over the internet, and therefore not.[1] The Court stated that the case of Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1194 (11th Cir. 2001), showed that in some cases the distribution of software over the internet could satisfy the requirement. However, it held that such a determination should be made on a factual, case-by-case basis. The Court also affirmed that the applicable test was "whether the software: (1) is simply the conduit or necessary tool useful only to obtain applicant's services; (2) is so inextricably tied to and associated with the service as to have no viable existence apart there from; and (3) is neither sold separately from nor has any independent value apart from the services".[1]
Applying these principles to the case at hand, the Court found that Lens.com's software was "merely the conduit" for its online retail sales services, and was "inextricably intertwined" with it. The Court found "no evidence" that the software had any "independent value."[1] It distinguished Planetary Motion because the nature of the software at issue, a webmail site called "Coolmail", was different than any "software" used by Lens.com to sell its contact lenses over the internet. In Planetary Motion, consumers associated the mark Coolmail with the software itself, whereas in Lens.com's case, consumers associated the mark LENS with the contact lens service, not the software. Thus, it concluded that Lens.com's trademark was not in "use in commerce" in association with software, thereby affirming the decision of the TTAB below to cancel the trademark.[6]
Finally, the Court did not accede to Lens.com's second avenue of argument, that the TTAB had erroneously relied on only part of Lens.com's application file in making its decision. Based on the record of the decision below, the Court found that the TTAB had properly considered the entire application file.[7]
Subsequent developments
While this case was ongoing, the two parties were also embroiled in other trademark litigation. Approximately one year following this decision, the
In August 2016, the Federal Trade Commission filed an administrative complaint against 1-800 Contacts alleging, among other things, that its search advertising trademark enforcement practices have unreasonably restrained competition in violation of the FTC Act. 1-800 Contacts has denied all wrongdoing and is scheduled to appear before an FTC administrative law judge in April 2017.[9]
See also
References
- ^ a b c d e f g h i Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012).
- ^ Glover, Jerry (August 16, 2012). "Federal Circuit Clarifies Meaning of "Use in Commerce" for Trademarks". Leavens, Strand, & Glover, LLC. Retrieved October 6, 2014.
- ^ Amato, Yuo-Fong (December 1, 2012). "Federal Circuit Affirms Cancellation of Registration Where Goods Were Misidentified". Gordon Rees Scully Mansukhani, LLP. Retrieved October 26, 2014.
- ^ Lens.com, supra, at 3.
- ^ Ibid.
- ^ Lens.com, supra, at 12.
- ^ Lens.com, supra, at 12–13.
- ^ 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013).
- ^ David O. Klein & Joshua R. Wueller, Trademark Enforcement and Internet Search Advertising: A Regulatory Risk for Brand Owners, IP Litigator, Nov./Dec. 2016.
Further reading
- Matheson, Hillary Cain (August 3, 2012). "Trademark Cancelled Because Software Used as a Conduit for Providing Services over the Internet Is Not a Good in Trade". Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. Retrieved October 8, 2014.
External links
- Works related to 1-800 Contacts, Inc. v. Lens.com, Inc. at Wikisource
- Text of Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012) is available from: CourtListener Google Scholar Justia Leagle