Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

Summer 2012 Issue

Federal Circuit Cases, Inc. v. 1-800 Contacts, Inc.,
686 F.3d 1376 (Fed. Cir. Aug. 3, 2012)


FACTS, Inc. (“”), an online retailer of contact lenses and related products, appealed a TTAB decision granting 1-800 Contacts, Inc.’s (“1-800 Contacts”) motion for summary judgment and ordering the cancellation of’s registration for the mark LENS. owned the subject LENS registration by virtue of an assignment as part of a settlement agreement in a third-party TTAB proceeding.  1-800 Contacts filed to cancel’s assigned LENS registration, alleging that fraudulently obtained or alternatively abandoned its registration because it never sold or otherwise engaged in the trade of computer software featuring programs for use in the field of optometry.  1-800 Contacts subsequently filed a motion of summary judgment on the claim of abandonment, which the TTAB granted, resulting in the cancellation of’s LENS registration.  On appeal, the Federal Circuit affirmed the TTAB’s decision granting summary judgment in favor of 1-800 Contacts.

In determining whether the LENS mark had ever been “used in commerce,” the Federal Circuit indicated that the focus of its inquiry was whether’s software was a “good” that was “transported in commerce,” because an article does not qualify as a “good in trade” when it is simply the conduit through which one renders its services.  Rather, a “good in trade” must have a viable existence on its own (instead of being inextricably tied to another service), and should have an independent value apart from other goods or services.  Because’s software served merely as the portal through which it rendered its online retail services, there was no evidence that the software had any independent value apart from rendering’s ordinary retail services.  Thus, the Federal Circuit concluded that the TTAB properly determined that the mark LENS did not meet the “use in commerce” requirement for its software, and affirmed the cancellation order.

This case is one of the few addressing whether, in the context of Internet services and Internet service providers, software is an independent good in commerce or is merely incidental to the Internet services.