UnIP (UnIntellectual Property): Trademark for Software Used Only as the Conduit for Online Retail Services

It is a bedrock of trademark law that in order to qualify for trademark protection, the good with which the mark is used in connection must be “sold or transported in commerce.” See 15 U.S.C. 1127. Relying upon this prerequisite for trademark protection, the United States Court of Appeals for the Federal Circuit has held that one is not entitled to registration of a trademark for software where the software is “merely the conduit through which” the mark’s owner offers its online retail services.

1-800-Contacts, Inc. successfully petitioned to cancel Lens.com’s trademark registration for LENS via the Trademark Trial and Appeal Board (TTAB). Lens.com appealed via the Federal Circuit. The Federal Circuit recognized that although Lens.com tried to claim trademark protection in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry”, Lens.com does not offer or sell software. Instead, Lens.com merely displays the LENS mark in connection with its on-line retail store services featuring contact lenses. Consumers are not buying software, but rather they are buying contacts. Thus, the Court held that it is not enough that software enabled consumers to purchase the contacts, especially where the software was “inextricably intertwined with Lens.com’s retail services.”

Interestingly enough, Lens.com’s attempt to register LENS in connection with its on-line retail store services featuring contact lenses has been denied by the USPTO as generic.

I saw this one coming…pun intended. One would not be able to claim trademark rights in the brick-and-mortar building facility through which retail services are provided. Likewise, this decision confirms one can not claim trademark rights in the online equivalent (i.e. software) through which retail services are provided. Those seeking to establish or extend their trademark rights need to remember the fundamentals of trademark law – the trademark must be used in connection with a good offered to consumers in commerce.

Lens.com, Inc. v. 1-800-Contacts, Inc., No. 2011-1258 (Fed. Cir. August 3, 2012).


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