and how it got here because i think that that's as interesting as some of the issues that we've got to go over today the appellate lens that becomes acquired is a trademark wesley justin used to distribute this software to its customers on a disk i believe and they would put it in their computers this was before the internet and they would put caused they for whatever reason discontinued using their software we want to register this market and they didn't we find they had abandoned their market sensually or going to abandon it and they just continued their software and so we got there their registration assigned it to us i guess my my concern is whether or not it's being used in commerce when you simply have an automated payment processing system purchase of the lenses and the reason i worry is because if i were to find in your favor it would seem that every single  site every single you know her they are of any good at all would arguably also be entitled to a software trademark because every system uses some form of automated automated payment systems for example google which is relevant in this case this particular case doesn't sell anything on here ok but every every person who does something on the internet and that number is number one if that were really true anybody who provided well everybody who didn't provide software would be the internet which provided for order entry of contact lenses  anything else i had that got a registration for software that the difference here is our site i'd take the registration for software in payment but but the some customers were not aware of the use of the mark in conjunction with their purchase now i would suggest to you that there are many many many web sites out there were customers are not aware of the mark in conjunction with their purpose or in conjunction with the software that they're making their purchase so they don't recognize the market as a market for the software and that's essential and that's the point i believe you are asking your honor that's the difference between us and a lot of other p c but wow the board said that len's dot com had actually they called it aband they took another step they said that since customers had nowhere does that just mark lens was being used in conjunction with the software that it whatever point presumably we had in fact accepted our specifications several times since then so they apparently were happy with our use but the real problem there is if the issue that we're going to be said that it's going to be said that we abandon our mark because the customers were not aware that lens was being used in conjunction with software that i think some evidence needs to be presented that fact but the board summarily concluded that on their own belief if you will without any evidence and neither did the position or one eight hundred contacts to present any evidence of that we on the other hand did present evidence with customer testimonials that said i really like your software i mean i read some of the i think they're in the record while i was very well pleased with being a first time customer i was impressed with the sort thoroughness of the site how easy it was t order exactly what i wanted wonderful ordering easy order experience we had expert midsomer cleary testify that this is important for web sites now that the customers have to recognize your software on a website they have to stand out because that's really how you're competing with other people on the internet that may be taking orders so software becomes the important thing really one of the most important things that you're giving the customer  expert testified that he believed in us and that the customers did not like the software did recognize software as part of their part of the lens mark because they had to type in the lens to get the first of all but then they really took note of the software and considerable time and energy was spent researching and developing this particular software and so if the customers did in fact recognize it then we should begin our mark but there was no evidence presented that the customers didn't recognize it and they have a duty to present that if they're going to take the marketplace on that basis that is the software here stuff that software use to so take well like many websites now what we're finding is effected the p t o has given out a numerous registrations for software for web sites so that they recognize the fact already that for web sites that settle things so ok so they recognize the fact that there may be numerous goods in trade for a particular market and we see repeatedly but that but that would be where for example a service is being rendered on the web site that you know perhaps you could have registered this for a site for the descriptivist problem for no contact lenses sold on the internet for the services offering for sale contact lenses using the internet we have a number of applications in place or being pursued actually so all of those things but that that crazy property rights those raise a different question so the question here is whether here is anything to suggest that the software is simply incidental to this to the trade involved of selling lenses and or the rendering of services involving lenses but that you're not really engaged in the trade of distributing software well your honor if i may i think that's another way of asking whether to the customers recognise it as something separate and we intended to be something separate because we devote your honey internet nothing that distinguishes you from everybody else is the software they get downloaded to their browser when you come to that particular oneself and what's to distinguish us for example from one eight hundred contacts when you go to their web site well i mean i agree with you but i think you're talking about the service rendered over the internet the service offering contact lenses that is a veil over the internet and certainly the mark you made from a very well be able argue that the market distinguishes your offering of that in this case as with one eight hundred and numerous other businesses on the interstate there are an internet there are hopefull marks that can be pursued under different classes and they're all available to the registry this is one that was available not only wasn't just one but should be available to us because there's from really not any difference between what we're doing and what wesley just and other than they provided the customer with the software on a disk and we provided downloaded to their computer via their browser is still order entry software ours is much better obviously is newer but they didn't have the technology have today but theirs was for providing software to allow the customer to purchase their contact lenses and such and your argument applies to to them also and if it's improper to us that it was think your honour's may please accord and mark millar represent one hundred contacts the x l e and i think a little background is a great place to start the question is why are they pursuing this registration they get it in the first place and the reason is they filed an application for their real business which is services online retail service it got rejected it got rejected because  is generic descriptive of the products they're selling as a retail store they were entitle to such a generic term so they want to circumvent the rule against generic notice they sue wesley jessen they say wesley  sentence ok and just for a correction the office didn't ultimately grant their application their application was denied on they just under a settlement agreement acquired an assignment of this registration  that the use that they're claiming they're making of it does not constitute a use in commerce for goods then it's a band we can't stop them from using it you may get the registration cancelled exactly and we're not asking them that they can't continue to use lens in connection with their online store but they can't get a registration for lens in connection with software in class nine they're not in the software business they don't trick and give consumer district court litigation between the parties they wanted something they could use to assert your your advertising on google when somebody searches the generic term lens we they wanted it a chip to play as a counterclaim so they s registration and that's all kind of underlying history and they would use that and for the broad scope they're seeking what they want this court to say is if if they were to get this registration  revived and have this registration simply as an online retailer in class nine for software they could sue any online retailer do you guys use i'm not dead well i'm just saying that because of the board  cancel this so it's current status of being canceled by the board pending appeal to this court and so if they were to get this then they could they could sue any online retailer who uses the word lens the generic descriptive term lens in connection with selling contact lenses and then they say well we don't provide consumers with software the defendant can say we don't give you have an online order form a computerized software order form that the consumers use and using land and so it gives them protection they're not entitled to now in registration ignoring the procedural benefits from registration and so your argument is all of a need to get this registration because then they could go out and start beating up everybody else's is not entirely accurate future regardless of what you do so registry not and when you don't have a registration of less likely they're going to go out and try to assert that common law right when they were actually distributing software  know that that's the basis on which wesley jessen was granted the registration directing us to say you can't get a trademark on software i'm not going to skirt the question at all sure i don't want to skirt the question i'm saying i disagree that that should be an acceptable use where what it is it's akin to the cases where the companies simply provide here's an ordering kit there's case law we cite in our brief where the company provides all their customers a free ordering kit has an order form has a return address it has a catalog and all that they try to get a registration on that ordering kit as a good a trademark rather than a service mark and they were denied that because it's merely incidental to their real business of selling the goods that they sell and so i would disagree that works but even if you say that what wesley jessen did by providing software bytes byte physically providing them a copy of software that they install on their computers even if that's enough to support registration that doesn't translate the way mr diggity are saying that now when you have an online or it's the same thing it's not the same thing online stores do not provide consumers with a piece of software consumers access their website and they can purchase things the only thing that they say from their of the owner and operator plans dot com is a company and their expert says every online store downloads a cookie or an athlon what those are little data pieces so that the next time that computer accesses their website they recognize the computer they know who it is they know their habits and so they can customize the servers but all that is is something they're utilizing to enhance the services they provide it's not an open and public offering or transfer of goods it would be akin to gold's gym that offers exercise services what gold's gym when they're out and without letting their customers know they place little g p s trackers on all the cars and then they track where they go and their habits and where they stay so they can enhance the service and advertising provide could gold's gym then get a registration for gold's gym g p s units when nobody would associate gold's gym as a source of g p s tracking argument awareness to keep open them public is the case lot and i guess that that that translates turbo tax operated was you go on their website you fill it out and the software on their servers processes everything for you i would say they are only entitled to a service mark but turbo tax does more than that you can go to cosco you can buy a turbo tax box you can install that software on your computer you know own that copy of the software and you can use it that way too so they're both similarly you can do that on line and  important distinction let's if you look at page twelve in page to page twelve of the blue green page six of the great three lenses are come sites two cases to try and support their position they cite planetary motion case from the eleventh circuit and they the planned parenthood case which i believe commerce but it was for a service mark the service is planned parenthood provided their internet website was enough to show use in commerce for a service mart then you go to planetary motion that deals with that trademark for software as merchandise the trademark was cool mail and this is the use that was described they posted the software on this on a server on a  linux site that was called some site users could download the software to their computer they accepted a license agreement on how they could use it and there was a user's manual so the user then had that software at  disposal it was their software and other companies do that but if you don't doubt if the consumer isn't making the decision this is software from this source i'm going to download  then it's not you're not providing software to the consumer as merchandise one one important distinction to make is this is a good deal less to talk about google e bay and there's a reason why his briefing doesn't web site has a registration for services services but the specimens they submitted to the patent trademark office for their trademarks in class nine for software google are specimens that show  download button do you want our google chrome application download here for e bay the specimen they submit for their class nine registration is for the e bay sellers assistant an individual piece of software with a download button download here except the terms and conditions now you have software that will enhance your experience on e bay you have to have the consumer know that they are accepting software from that provider otherwise you go into a retail store you see their cash registers they may have a really efficient system there wendy's barnes and noble anywhere and you may think boy they've got a really great piece of software on their registers the processes that please retail service is really good but that is not software as merchandise in commerce that software they're using to enhance the services they provide public that's the distinction lens dot com provides online retail services they may utilize software to enhance those services but they don't provide the public with software that to make two points please which i think i can do in less than a minute i'm going to try we consistently hear about the consumers have to know that they're downloading software that consumers have to be aware that they're downloading software or otherwise is just can be a software that can be trademarked this was their case where the petitioners if they want to say that's why this mark should be canceled then they have the burden of proof on that point but they didn't present any evidence at the consumers don't know this the board didn't have any evidence that the consumers don't know this and in fact we presented evidence that the consumers do know so if that is a good argument that the consumers need to know then they lose on that because they presented no evidence whatsoever no need to bring another action perhaps if they can and prove it then but the board had no basis to make that decision if it is in fact relevant number two i find it almost comical that the representative from one eight hundred contacts said that len's dot com must want this registration so they can beat up their competitors well this is one of the actions of that one eight hundred s filed against my client against the other competitors it is it began when one eight hundred two lenses not com for some claims that they essentially lost already of the second circuit in the when you case that case was just decided in my client's favor after years and years of litigation in utah where the dot com resides and we won virtually every single issue in that case against one eight hundred contacts and now we filed our motion for over a million dollars in attorneys so there's a bully here it's certainly not one dot com and now there's another lawsuit pending against lance dot com there's time  violation of antitrust laws so and i think the judge is right to really doesn't matter what the reason is for our tact of deciding we want is our trademark arsenal repertoire and i don't care a google wants one or not