Lens.com, Inc. v. 1-800 Contacts, Inc., No. 11-1258 (Fed. Cir. 2012)
Annotate this CaseIn 1998, the U.S.PTO issued Registration 334 to WJ for the mark LENS in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” In 2001, Lens.com, an online retailer of contact lenses applied for the mark LENS in connection with “retail store services featuring contact eyewear products rendered via a global computer network.” The PTO cited the 334 Registration as a bar based on likelihood of consumer confusion and refused registration of the mark as merely descriptive of services. In 2002, WJ assigned the registration to Lens.com, which withdrew its cancellation petition under a settlement agreement and obtained the 334 Registration for the mark LENS in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” In 2008, 1-800 Contacts filed Cancellation 925 alleging that Lens.com abandoned or fraudulently obtained the mark LENS because Lens.com never sold or otherwise engaged in the trade of computer software. The Board granted summary judgment of abandonment on the ground that the software is merely incidental to sale of contact lenses, and is not a “good in trade,” solicited or purchased in the market for its intrinsic value.’” The Federal Circuit affirmed.
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