Ninth Circuit Takes Expansive View of Dilution Act in Visa Trademark Case

In a decision that will be welcomed by owners of famous brands, the Ninth Circuit Court of Appeals recently affirmed summary judgment in favor of credit card giant Visa on its trademark dilution claim against use of "eVisa" for an Internet-based "multilingual education and information business" Visa Int'l Serv. Ass'n. v. JSL Corp., No. 08-15206 (9th Cir. June 28, 2010). In an opinion authored by Chief Judge Kozinski, the Ninth Circuit upheld the Nevada District Court's finding that JSL's use of "eVisa" constituted dilution as a matter of law of the famous "VISA" brand. In doing so, the Court found for Visa International on several disputed issues.

First, the Court found that JSL's mark was "effectively identical" to the plaintiff's famous VISA mark, rejecting the argument that the additional letter "e" distinguished the marks. The Court indicated that because most consumers interpret that element as merely referring to the "electronic or online version of a brand," the "e" prefix was no more distinguishing than the addition of a generic corporate identifier such as "Corp." or "Inc."

Second, the Court rejected the argument that the word "visa," as a common English word, was less entitled to protection from dilution than other famous marks based on coined or invented marks. JSL had argued that its use of the "eVisa" mark for a "multilingual education and information business" directly referred to the common English meaning of "visa." According to JSL, its "eVisa" mark was suggestive of this common usage of the word, and did not bring to mind the plaintiff's mark or introduce a further association with the plaintiff's mark.

The Ninth Circuit acknowledged that it may be difficult for a trademark plaintiff to demonstrate the distinctiveness of a word found in the dictionary. Nevertheless, the Court found that where the defendant is not using the term "for its literal dictionary definition," but instead as its own trademark, that use can constitute dilution by blurring if the effect is that "there are now two products, and not just one, competing for association with that word." This, the Court found, is the "quintessential harm addressed by anti-dilution law."

Further while recognizing that "JSL's allusions to international travel were more obvious and heavy-handed than Visa's," the Ninth Circuit rejected the defense. According to the Court, the fact that JSL used Visa's famous mark in commerce to identify a good or service in a new and...