Wednesday, August 08, 2012

CAFC Affirms TTAB Cancellation of "LENS" Registration: Mark Not Used for Software

In a precedential ruling, the CAFC affirmed a May 8, 2010 decision of the TTAB (here) summarily cancelling a registration for the mark LENS for "computer software featuring programs used for electronic ordering of contact lenses...." The Board found that "software is merely incidental to ['s] retail sale of contact lenses, and is not a 'good in trade.'", Inc. v. 1-800 Contacts, Inc., 103 USPQ2d 1672 (Fed. Cir. 2012) [precedential]

The Trademark Act defines "use in commerce" for goods as follows:

The bona fide use of a mark in the ordinary course of trade . . . . [A] mark shall be deemed to be in use in commerce –

(1) on goods when –

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce

The court observed that the actual sale of goods is not required to satisfy § 1127’s “use in commerce” requirement, provided that the goods are “transported” in commerce.

Registrant does not sell software, and therefore the appeal focused on "whether’s software is a 'good' that is “transported in commerce." CCPA precedent establishes that "an article does not qualify as a good in trade when that article is 'simply the conduit through which [the applicant] renders services,' i.e., is “the essence or gist of [the applicant’s] services.” In addition, "when an article 'has no independent value apart from the services,' such article is not likely to be an independent good in trade."

The court noted, however, that there is little precedent on whether an Internet service provider's software is an independent "good" in commerce, or is merely incidental to the Internet services.

The question is whether consumers associate a mark with software, as opposed to other services. That is "a factual determination that must be conducted on a case-by-case basis. Relevant factors to consider include 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 therefrom; and (3) is neither sold separately from nor has any independent value apart from the services." None of these factors is dispositive.

Here,’s software is merely the conduit through which it renders its online retail services.’s customers utilize the website (and thereby the software associated therewith) to avail themselves of’s services.’s software is inextricably intertwined with the service that provides to its customers—the software facilitates the customers’ online order, which is unique to each customer depending on the links he or she clicks on, the screens viewed, and the ultimate decision of whether or not to order contacts. While’s software may provide greater value to’s online retail services by enhancing the overall consumer experience, there is no evidence that it has any independent value apart from in rendering the service.

There was no evidence of record indicating that "consumers have any reason to be aware of any connection between the LENS mark and’s software." There was no association of the LENS mark with software on Registrant's website, and no evidence that consumers make such an association. Even viewing the evidence in a light most favorable to Registrant, there was no genuine issue of material fact regarding this association, or lack thereof.

Therefore, since Registrant had not used the mark in connection with software for a period of three consecutive years, the mark was properly deemed abandoned and the Board's ruling was correct.

TTABlog note: Last year the Board issued a precedential decision on the issue of "goods in trade," finding that an Applicant's medical reports are merely "part and parcel" of its laboratory testing services and are not "goods in trade" sold separately. In re Ameritox Ltd., 101 USPQ2d 1081 (TTAB 2011) [precedential].

Text Copyright John L. Welch 2012.


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