## Facts

- In 1998, the USPTO issued Registration No. 2,175,334 for the mark **LENS** for “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry” (International Class 9) to Wesley–Jessen Corporation.
- Lens.com, Inc. operated an online business selling contact lenses to consumers through its website.
- In 2001, Lens.com applied to register **LENS** for online retail store services involving contact lens products, but the USPTO refused the application, citing the existing LENS software registration.
- In 2002, Lens.com obtained ownership of the existing LENS software registration through a settlement agreement and assignment.
- Customers visiting Lens.com’s website could click links and enter information to order contact lenses; if an order was placed, Lens.com shipped the contact lenses to the customer.
- In 2008, 1-800 Contacts, Inc., a competing contact lens seller, filed a petition at the Trademark Trial and Appeal Board (TTAB) seeking cancellation of the LENS software registration, alleging (among other theories) abandonment because Lens.com had never offered or sold software under the LENS mark.
- Lens.com responded that, during the web-ordering process, it transmitted software to users (such as an applet or similar code) and that this transmission was trademark use for the registered “computer software” goods.
- The TTAB granted 1-800 Contacts summary judgment on abandonment and ordered cancellation, reasoning that any software delivered during ordering was merely incidental to Lens.com’s retail sales and not a “good in trade” with value as a product in the marketplace.
- Lens.com appealed to the U.S. Court of Appeals for the Federal Circuit.

## Issues

1. Whether Lens.com’s transmission of website-related software to customers during the contact lens ordering process constituted “use in commerce” of **LENS** for the registered goods (“computer software”) sufficient to avoid abandonment.
2. Whether software that functions only as part of providing an online retail ordering process can qualify as a “good in trade” (a product sold or transported in commerce), rather than being incidental to retail services.
3. Whether summary judgment was proper where Lens.com claimed factual disputes about the nature of the software delivered to website users.

## Decision

- The Federal Circuit **affirmed** the TTAB’s grant of summary judgment and the **cancellation** of the LENS registration.
- The court agreed that the TTAB applied the correct standard: to maintain a registration for software as goods, the registrant must show trademark use for software as a product in commerce, not merely internal or incidental code supporting a service.
- The court concluded there was no genuine dispute of material fact that Lens.com did not use **LENS** in commerce in connection with software goods as identified in the registration.

## Legal Principles

- A trademark registration may be canceled for **abandonment** when the mark is not used in commerce for the registered goods or services, as required by the Lanham Act.
- For **goods**, “use in commerce” generally requires that the mark be placed on the goods (or their displays) and that the goods be **sold or transported in commerce**.
- For **software** listed as goods (Class 9), trademark use requires that the software be distributed in commerce as a product with marketplace significance (for example, sold, licensed, or otherwise obtained for its value as software).
- Software or code transmitted only to enable an online ordering process, with no separate product offering, is properly treated as **incidental to services** rather than as a “good in trade.”
- When the registrant’s real-world activity amounts to retail services while the registration covers software goods, the mismatch can support cancellation if the registrant cannot show qualifying use for the listed goods.

## Conclusion

The Federal Circuit upheld cancellation of Lens.com’s LENS registration for “computer software” because the record showed Lens.com operated an online retail contact lens business and did not distribute LENS-branded software as a marketplace product; any software transmitted during the ordering process served only to facilitate the retail transaction and did not constitute use in commerce for software goods, supporting a finding of abandonment and making summary judgment appropriate.


Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (2012)