Lens v 1-800 Contacts trademark case: use in commerce
15 U.S.C. § 1064 provides in pertinent part that “[a] petition to cancel a registration of a mark . . . may . . . be filed . . . (3) At any time if the registered mark . . . has been abandoned.” In turn, 15 U.S.C. § 1127 (emphasis added) provides:
A mark shall be deemed to be ‘abandoned’ . . . (1) When its use has been discontinued with intent not to resume such use. . . . Nonuse for 3 consecu- tive years shall be prima facie evidence of aban- donment. ‘Use’ of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. In addition, §1127 (emphasis added) defines “use in commerce” as:
The bona fide use of a mark in the ordinary course of trade .... [A] mark shall be deemed to be in use in commerce –
(1) on goods when –
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such place- ment impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce ....
The statute is clear that the actual sale of goods is not required to satisfy § 1127’s “use in commerce” requirement, provided that the goods are “transported” in com- merce. §1127; see also Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1194 (11th Cir. 2001) (“The term ‘use in commerce’ as used in the Lanham Act ‘denotes Congress’s authority under the Commerce Clause rather than an intent to limit the [Lanham] Act’s applica- tion to profit making activity.’” (quoting United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92-93 (2d Cir. 1997)). However, “not every transport of a good is sufficient to establish ownership rights in a mark.” Id. at 1196; Gen. Healthcare Ltd. v. Quashat, 364 F.3d 332, 337 (1st Cir. 2004). “In assessing rights stemming from transportation, courts and commentators have required an element of public awareness of the use.” Gen. Healthcare, 364 F.3d at 335.
See Lens vs. 1-800 Contacts