When Is A Word Not A Word? When It Turns Into A Famous and Distinctive Trademark.

On June 28, 2010, the Ninth Circuit Court of Appeals decided a trademark dilution in favor of Visa International Service Association ("Visa"). Although the Court found that Visa did not actually own the word "visa", it certainly owns the right to prevent others from using it, at least in a trademark context.

The noun "visa" has long been defined to mean "[a]n endorsement made on a passport by the proper authorities of certain European countries." Webster's Collegiate Dictionary (G. & C. Merriam Co., 1898), p. 910. But that fact did not suffice to permit the operator of a "multilingual education and information business," to use the mark "eVisa" for services other than travel visas.

Visa introduced uncontroverted evidence that it is the world's top brand in financial services and is used for online purchases almost as often as all other credit cards combined. eVisa was described as a "multilingual education and information business that exists and operates exclusively on the Internet." Joseph Orr operated eVisa through his company, JSL Corporation, the defendant in this case.

Under U.S. trademark law, the owner of a mark that has become famous and distinctive can prevent another's use of a different mark that is likely to dilute the first owner's mark. This is known as the anti-dilution law. To prevail, the plaintiff must show that (1) its mark is famous and distinctive, (2) the junior user began using its mark in commerce after plaintiff's mark became famous and distinctive, and (3) defendant's mark is likely to dilute plaintiff's mark.

There are essentially two types of dilution: "blurring" and "tarnishment." This case focused on dilution by blurring, which occurs when a park previously associated with one product becomes associated with a second product, which weakens the mark's ability to evoke the first product in the minds of consumers. (For example, Tylenol snowboards, Netscape sex shops, Harry Potter dry cleaners would all weaken the "commercial magnetism" of these marks and diminish their ability to evoke their original associations.)

And although the word "visa" is a common English word, context is key. The defendant argued that the eVisa mark was used to connote the ability to travel, both linguistically and physically, through the English-speaking world. However, the court found that it also used the mark to identify its "multilingual education and information services." The analysis turned less on the defendant's use of its mark, than on Visa's use of the word as a mark in a manner that only weakly played off the dictionary meaning of the term. This allowed Visa it to cultivate its use. Once the mark earned its distinctive and famous status, Visa obtained the right to exclude others from using the word in a trademark context in manner likely to dilute its mark. In this case, the court found that eVisa had done just that.

This is not to say that Visa could enforce its mark to prevent the defendant from using the mark to describe its services in a non-trademark manner; the idea behind trademark law is to protect the use of a mark as a source identifier. Thus, if the defendant's business involved providing visa services, the court explained that the defendant could call its business "Orr's Visa Services" without violating the anti-dilution law. But the defendant's use of the word in this case was not used to refer to travel visas, rather it was used to identify "multilingual education and information services." As such, it was using the word in a trademark to refer to a good or service other than travel visa services. This tended to blur the meaning of Visa's mark and constituted trademark dilution.

The Ninth Circuit's opinion in Visa International Service Association v. JSL Corp. can be found here.