In late June 2010, the 9th Circuit Court of Appeals issued an opinion written by Chief Judge Kozinski affirming the trial courts' decision that a common English word, eVISA, could dilute the famous VISA credit card trademark. eVisa was being used by appellant JSL for a multilingual education services. JSL argued that its eVisa mark could not dilute the VISA trademark because visa is a common English word meaning a travel document that authorizes the bearer to enter a foreign country and as a result VISA's use of this common word could not be distinctive as is required under 15 U.S.C. §1125(c).
The Court disagreed with JSL but its opinion took pains to distinguish fanciful trademarks from those that are common English words for purposes of applying the dilution statute as follows:
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 word is likely to be suggestive of an essential attribute of the trademarked goods. Moreover, such a word may already be in use as a mark by third parties.
To be diluted the mark must be both famous and distinctive. A non-distinctive mark can not be diluted and it is likely that a common English word used as a trademark will not be considered distinctive if others have adapted that word, which is likely in the case of these common words. Thus, if there are other uses of the mark, dilution by blurring is unlikely because the mark has not been associated with only one product and the new use of the mark is not likely to evoke in the minds of consumers an association with only one other product.
The Court held that although VISA, as used by the credit card giant, was a common dictionary word, its use of VISA was sufficiently distinctive "because it played only weakly off the dictionary meaning" of the term visa. It also held that the significant factor is not whether the word is a common word, but instead whether the use of the word VISA by the credit card issuer was sufficiently unique to warrant trademark protection. The Court explained "there are many camels but just one Camel [cigarette]; many tides, but just one Tide [detergent]...".
Although there is widespread use of the word visa for its common English meaning, e.g. Fred's Visa Service, JSL did not use visa for its common everyday meaning and as a result there were now two products in the market named VISA, the Court having disregarded the "e" as being meaningless to distinguish the two marks.
The Court patiently explained that trademark law will not prevent a person from using another's common word mark in its everyday, intended, manner, e.g. Joe's Apple Orchard; or Bob's Camel Farm. Conferring anti-dilution rights to common English words used as such would deplete the inventory of available and useful words.
But JSL did not use Visa for its literal dictionary meaning, and VISA was found to be strong and distinctive. As a result, eVisa diluted VISA by blurring and its use was enjoined because a consumer seeing eVisa was likely to associate it with VISA.
In summary, this is what the Court concluded:
The Court held that although VISA, as used by the credit card giant, was a common dictionary word, its use of VISA was sufficiently distinctive "because it played only weakly off the dictionary meaning" of the term visa. It also held that the significant factor is not whether the word is a common word, but instead whether the use of the word VISA by the credit card issuer was sufficiently unique to warrant trademark protection. The Court explained "there are many camels but just one Camel [cigarette]; many tides, but just one Tide [detergent]...".
Although there is widespread use of the word visa for its common English meaning, e.g. Fred's Visa Service, JSL did not use visa for its common everyday meaning and as a result there were now two products in the market named VISA, the Court having disregarded the "e" as being meaningless to distinguish the two marks.
The Court patiently explained that trademark law will not prevent a person from using another's common word mark in its everyday, intended, manner, e.g. Joe's Apple Orchard; or Bob's Camel Farm. Conferring anti-dilution rights to common English words used as such would deplete the inventory of available and useful words.
But JSL did not use Visa for its literal dictionary meaning, and VISA was found to be strong and distinctive. As a result, eVisa diluted VISA by blurring and its use was enjoined because a consumer seeing eVisa was likely to associate it with VISA.
In summary, this is what the Court concluded:
- Common English words can dilute a famous and distinctive mark.
- Whether dilution exists is a question of fact, but summary judgment may be granted if no reasonable fact finder could fail to find a likelihood of dilution, as occurred here.
- Where the mark is in the dictionary as a word, it may be different to establish that the mark is sufficiently distinctive. This is particularly true where there are other uses of the word as a mark.
- Use of another's mark for its dictionary meaning should not be enjoined, e.g. JSL's Visa Service.
These practice pointers may help establish protectable rights in common English words:
- A common English word proposed to be used should be tested to determine if it is being used in its dictionary sense, or in an arbitrary sense. If arbitrary, it may dilute another use if that use is famous and distinctive, e.g. Blackberry Farms v. Blackberry Motors. If arbitrary and there are no other trademark uses of this word, it may be protectable or distinctive although it must also be famous.
- Look for other uses of the mark; it is more likely that the mark does not dilute if there are other trademark uses of the mark.
- Dilution does not require a finding that there is a likelihood of confusion.
LexisNexis Emerging Issues Analysis by Jim Astrachan
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