WASHINGTON—In a motion filed with the Federal Trade Commission last week, online contact lens retailer 1-800 Contacts has asked  the commission to “stay” part of its recent order that affects the company’s trademark enforcement efforts. In its filing, 1-800 Contacts said the agency’s order “threatens irreparable harm to 1-800’s trademark enforcement efforts and rights, relationships with industry partners, and competitive position generally.” As VMAIL reported earlier this month, the FTC ruled that 1-800 Contacts, through its agreements related to online advertising, “unlawfully entered into a web of anticompetitive agreements with rival online contact lens sellers.”

In the commission’s opinion, the FTC ruled that the agreements between 1-800 Contacts and 14 other online contact lens retailers “constitute unfair methods of competition.”

In its response, 1-800 Contacts noted that the FTC’s order “goes much further — well beyond trademark search advertising,” and as a result threatens “irreparable harm” to the company’s trademark enforcement rights. “For example, the order requires 1-800 to provide the commission every communication regarding every trademark enforcement effort, and only permits trademark settlements that, ‘in effect, tell the counterparty that they cannot violate trademark laws,’” the company said in its filing. “As the dissent explained, this type of question-begging mandate will reduce 1-800’s incentive to bring, and ability to settle, trademark disputes—all to the detriment of its valuable brand.”

The issue at the FTC goes back to 2016 and an administrative complaint filed against 1-800 Contacts. The complaint was focused on operational practices in search advertising that took place as early as 2004, when 1-800 Contacts reportedly took actions to warn an online competitor about allegedly infringing the 1-800 Contacts’ trademarks by making purchases related to the 1-800 Contacts name in the pay-per-click search advertising market.

In its response to the FTC’s ruling, 1-800 Contact said last week that “although this case centers on agreements not to use certain trademarked keywords in search advertising on the internet—one of many advertising platforms—the order deputizes the Commission as overseer of 1-800’s entire brand enforcement program.”

1-800 Contacts further requested that the agency grant its “partial stay request,” which would not impact the core of the agency’s enforcement order. “1-800 will not enforce the challenged provisions in the 14 agreements during the appeal and will notify the counterparties of the commission’s decision,” 1-800 Contacts said in its filing. “At the same time, granting this motion will address 1-800’s legitimate concerns—particularly with the breadth of the order—pending the outcome of an appeal.”