Caseflicks

Court of Appeals for the Ninth Circuit • 2010

Visa International Service Ass'n v. JSL Corp.

610 F.3d 1088 | 2010 U.S. App. LEXIS 13380

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Takeaway

In short, this case holds that a famous trademark can receive strong anti-dilution protection even when it is a common word, so long as the challenged use employs that word as a trademark for a different commercial source rather than merely in its ordinary dictionary sense.

Background

Pacts Joseph Orr operated eVisa, an Internet-based multilingual education and information business, through JSL Corporation. Orr said that “eVisa” derived from an earlier Japanese English-conversation service, “Eikaiwa Visa,” and was intended to evoke linguistic and physical travel through the English-speaking world. His website used passport imagery and described its offerings as “Travel Passport,” “Language Passport,” and “Technology Passport.”

Visa International Service Association sued JSL under the federal Trademark Dilution Revision Act, alleging that eVisa was likely to dilute Visa’s famous trademark by blurring. The district court granted summary judgment for Visa and enjoined JSL from using the eVisa mark. JSL appealed, conceding that Visa’s mark was famous and distinctive and that JSL’s use began after Visa achieved fame.

Issues

Issue #1

Whether summary judgment could properly be granted on Visa’s claim of dilution by blurring.

Holding

Yes. No reasonable fact-finder could fail to find that JSL’s eVisa mark was likely to dilute Visa’s famous mark by blurring.

Reasoning

Federal anti-dilution law requires the plaintiff to establish that its mark is famous and distinctive, that the defendant began commercial use after the mark became famous, and that the defendant’s use is likely to dilute the mark. JSL disputed only the final element. Blurring occurs when a mark that once identified one product becomes associated with another, weakening its capacity to call the original product to mind. It does not depend on consumer confusion; indeed, the harm is the formation of a new association.

Likelihood of dilution is ordinarily a factual question, but summary judgment remains appropriate where the undisputed evidence permits only one conclusion. Congress identifies, among other relevant considerations, the similarity of the marks and the distinctiveness and recognition of the famous mark. A court may conclusively resolve those factors when the record does not permit a reasonable contrary finding.

The marks were effectively identical. The prefix “e” is commonly understood to designate an electronic or online version of a brand and did not meaningfully distinguish eVisa from Visa, just as a corporate suffix such as “Inc.” would not. Use of an identical or nearly identical mark is circumstantial evidence of dilution.

Visa was also an exceptionally strong mark. Although it draws modestly on favorable associations with a travel visa, those associations are too remote from credit-card services for the word itself naturally to suggest Visa’s financial-services business. Visa’s extensive goodwill, its status as the leading financial-services brand, and its pervasive use in online purchasing supported the conclusion that the mark deserved broad protection and that eVisa was likely to blur it.

JSL offered no meaningful evidence to rebut the inference arising from the marks’ near identity and Visa’s strength. Orr’s asserted lack of intent to dilute could not negate likely dilution. Because Visa was not required to prove its case through expert evidence or consumer surveys, and the intrinsic characteristics of the marks themselves established likely blurring, the court did not need to decide JSL’s Daubert objections to Visa’s survey and expert evidence.

Issue #2

Whether Visa’s status as a common English word prevented protection against dilution by JSL’s eVisa mark.

Holding

No. Visa’s common dictionary meaning did not defeat its distinctiveness as a trademark or make JSL’s trademark use permissible.

Reasoning

A trademark that is also a dictionary word may present a more difficult dilution claim when the owner’s use is descriptive or suggestive of the goods, or when third parties commonly use the word as a mark. But Visa’s connection to travel documents only weakly relates to credit-card services, and JSL produced no evidence that third parties used “visa” as a trademark for other goods or services. Thus, Visa’s trademark use remained sufficiently distinctive.

The widespread non-trademark use of “visa” to describe a travel document did not undermine the uniqueness of Visa as a commercial identifier. The relevant inquiry is not whether the word is common in ordinary speech, but whether its use as a mark in a particular commercial context uniquely identifies a source. Just as common words can function as strong marks in the proper context—many camels but one Camel, many tides but one Tide—Visa could identify a single famous brand despite the ordinary meaning of “visa.”

Visa did not acquire ownership of the word in every setting. It could not stop a business from using “visa” literally, such as “Orr’s Visa Services,” because that usage would simply invoke the existing dictionary meaning of a travel authorization. Allowing a trademark owner to monopolize such literal uses would improperly deplete the stock of useful words and would not serve dilution law’s purpose.

JSL, however, was not using “visa” merely to refer to a travel document. It used eVisa as a trademark for a multilingual education and information business. Passport imagery and travel-related language did not alter that commercial function; rather, they helped create a new trademark association for the word. By causing “visa” to identify both Visa’s financial-services brand and JSL’s online educational business, eVisa created the precise multiplication of associations that dilution by blurring prohibits.