Intellectual Property Law

District of Nevada Finds EVISA Likely to Dilute VISA Under "New" Standard

By Michael Atkins

Happy holidays from STL!

A little time has passed since this decision, but I didn’t want to let it go without comment. On Dec. 16, the District of Nevada found on summary judgment that defendant JSL Corp.’s use of EVISA as a trademark and domain name was likely to dilute by blurring Visa International Service Association’s VISA trademark. The decision under the “new” standards set forth in the Trademark Dilution Revision Act is similar to the court’s two previous summary judgment orders under the “old” standards set before and after the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003).

The decision was made on remand in light of the Ninth Circuit’s amended decision in Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008), in which the Ninth Circuit applied the TDRA to a trademark dilution claim the plaintiff filed before the TDRA was enacted.

Nowadays, a plaintiff must prove four elements to establish dilution under the TDRA: “(1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the defendant’s use of the mark is likely to cause dilution by blurring or dilution by tarnishment.” Jada Toys, Inc., 518 F.3d at 634.

As discussed in Las Vegas Trademark Attorney’s comprehensive summary, the District of Nevada found Visa’s dilution claim met this standard (as the court had found under different standards twice before).

The case cite is Visa International Service Ass’n v. JSL Corp., No. 01-294 (D. Nev. Dec. 16, 2008) (Hicks, J.).

Full post as published by Seattle Trademark Lawyer on December 28, 2008 (boomark / email).