Intellectual Property Law

Ninth Circuit Finds Use of Ordinary Word in Trademark Still Can Dilute

By Michael Atkins

“She sells sea shells by the sea shore. That’s swell, but how about Shell espresso, Tide motor oil, Apple bicycles and Playboy computers? We consider the application of anti-dilution law to trademarks that are also common English words.”

One guess which Ninth Circuit judge wrote the this opinion?

Judge Alex Kozinski is a great writer. He wrote the opinion in Visa Int’l Service Association v. JSL Corp., which the court handed down on June 28.

The case considered whether the mark EVISA, which evolved from ELKAIWA VISA, for an Internet language school dilutes the credit card processing association’s famous VISA trademark. “Elkaiwa” is Japanese for English conversation, which when paired with “visa” is meant to suggest the ability to travel through the English-speaking world.

The District of Nevada granted summary judgment for Visa International, enjoining JSL Corp.’s use of the mark on the ground it was likely to cause dilution.

JSL appealed, arguing its EVISA cannot cause dilution because visa is a travel document authorizing the bearer to enter a country’s territory. The Ninth Circuit noted that “When a trademark is also a word with a dictionary definition, it may be difficult to show that the trademark holder’s use of the word is sufficiently distinctive to deserve anti-dilution protection because such a word is likely to be descriptive or suggestive of an essential attribute of the trademarked good.”

The court seemed to sympathize with JSL Corp.’s position, but found that its use of “visa” as a trademark despite its ordinary meaning is still likely to dilute Visa International’s famous mark.

“It’s true that the word visa is used countless times every day for its common English definition, but the prevalence of such non-trademark use does not undermine the uniqueness of Visa as a trademark. ‘The significant factor is not whether the word itself is common, but whether the way the word is used in a particular context is unique enough to warrant trademark protection.’ In the context of anti-dilution law, the ‘particular context’ that matters is use of the word in commerce to identify a good or service. There are, for instance, many camels, but just one Camel; many tides, but just one Tide. Camel cupcakes and Tide calculators would dilute the value of those marks. Likewise, despite widespread use of the word visa for its common English meaning, the introduction of the eVisa mark to the marketplace means that there are now two products, and not just one, competing for association with that word. This is the quintessential harm addressed by anti-dilution law.”

The case cite is Visa Int’l Serv. Assoc v. JSL Corp., __ F.3d __, 2010 WL 2559003, No. 08-15206 (9th Cir. June 28, 2010).

Full post as published by Seattle Trademark Lawyer on June 30, 2010 (boomark / email).