Federal Circuit Clarifies Meaning of “Use In Commerce” For Trademarks
by Jerry Glover
August 16, 2012
In order to obtain a trademark registration for a mark in the U.S. Trademark Office, the applicant must prove that the applicant has used the mark “in the ordinary course of trade.” 18 U.S.C. Sec. 1127. The federal Trademark Act (commonly known as the Lanham Act) defines “ordinary course of trade” as “use in commerce” and that phrase is further defined as, among other things, use on goods “when … the goods are sold or transported in commerce.” Id.
In a recent decision, the U.S. Court of Appeals for the Federal Circuit clarified the meaning of “use in commerce” where an alleged non-traditional use of a mark was involved. Lens.com, Inc. v. 1-800 Contacts, Inc., 2012 WL 3149263 (Fed. Cir. August 3, 2012). In this case, Lens.com held a trademark registration for the mark LENS for “retail store services featuring contact eyewear products rendered via a global computer network.” Wesley-Jessen Corporation had earlier acquired a trademark registration of the same mark, LENS, in connection with “computer software featuring program used for electronic ordering of contact lenses.” Following the initiation of a cancellation proceeding by Lens.com against Wesley-Jessen, the parties settled the matter with Wesley-Jessen’s agreement to assign its LENS mark to Lens.com.
Lens.com used the LENS computer software to assist customers who purchased contact lens via the Lens.com website.
Then along comes the defendant in the present case, 1-800 Contacts which filed a cancellation proceeding against Lens.com in the U.S. Trademark Office claiming that Lens.com never sold or otherwise engaged in the trade of computer software even though its assigned LENS mark was for computer software. The U.S. Trademark Trial and Appeal Board granted 1-800’s motion for summary judgment holding that the computer software Lens.com used was “merely incidental to its retail sale of contact lenses” and was not “solicited or purchased … for its intrinsic value.” Lens.com appealed.
On appeal Lens.com argued that the “use in commerce” requirement for trademarks did not require the actual sale of goods but could mean commercial use that is typical for a particular industry so that the phrase can be interpreted “with flexibility” to encompass genuine but less traditional trademark uses. 1-800 argued that Lens.com had presented no evidence that on-line customers of Lens.com were aware of any connection between the LENS mark and the software noting that Lens.com advertised its web site as a contact lens replacement company and a direct to consumer marketer of contact lenses. Nowhere, 1-800 continued, does Lens.com even mention the software at issues in these promotions; therefore, Lens.com did not use the LENS mark for computer software in commerce.
The Federal Circuit sided with 1-800. The court noted that trademark law has always required an element of public awareness that someone is using a trademark for a particular good or service as required by Section 1127 of the Lanham Act. Here, Lens.com was not selling software so, pursuant to that same Lanham Act section, was Lens.com “transporting” the software in commerce.
The court described the Lens.com software as being merely a “conduit through which [the applicant] renders services” and had “no independent value apart from the [Lens.com] services.” The court also concluded that the software was so “inextricably tied to and associated with the service to have no viable existence apart therefrom.”
So if you are a trademark owner, make sure that you give attention to how you are promoting and advertising the product/service to which that trademark applies. Make sure that any advertising and promotion utilizing the trademark clearly shows consumers the various components of the product/service to which the trademark applies.