Ninth Circuit Finds Dilution by Blurring Despite Mark Also Having English Meaning

In Visa International Service Association v. JSL Corp., 95 USPQ2d 1571 (9th Cir. 2010), JSL is owned by Joseph Orr, runs “eVISA,” a multilingual education and information business that exists and operates exclusively on the Internet,” at http://www.evisa.com.  Orr claimed that the name eVisa originates from his English language tutoring service called “Eikaiwa Visa” that he operated in Japan he ran while living in Japan. “Eikaiwa” is Japanese for English conversation.  As such, the “e” in eVisa is short for Eikaiwa.

Visa International sued JSL for trademark dilution of its VISA mark.  In defense, JSL claims that the eVisa mark is different from the VISA mark, and evokes a dictionary definition related to travel documents. The District Court disagreed with JSL, and granted summary judgment to Visa International on the grounds of trademark dilution.

On appeal, the Ninth Circuit noted that to find dilution, the plaintiff “must show that its mark is famous and distinctive, that defendant began using its mark in commerce after plaintiff’s mark became famous and distinctive, and that defendant’s mark is likely to dilute plaintiff’s mark.”  Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008).  JSL did not dispute the fact that the Visa mark is famous and distinctive or that JSL began using the “eVISA” mark in commerce after VISA achieved its renown.  However, JSL argued that “eVisa” did not dilute VISA trademark because “Visa” is a common English word, only meaning a travel document authorizing the bearer to enter a country’s territory.   As the term VISA can be both an English word relating to travel documents as well as a mark owned by Visa International in relation to financial products, JSL’s use would not dilute Visa International’s VISA mark since its use is in the context of travel documents.

While the Ninth Circuit noted that marks having dictionary meanings are given weaker protection, such weaker protection applies more where the mark in question has little relation to the goods covered by the mark.  As an example, the Ninth Circuit noted that the mark “Trek” in the context of a bicycle is afforded narrower protection even for dilution actions since the mark owner’s product was related to the definition of trek (i.e., wandering and traveling as would be done on a bicycle).  Thane Int’l v. Trek Bicycle Corp., 305 F.3d 894, 64 USPQ2d 1564 (9th Cir. 2002).  In contrast, Visa International’s VISA mark bears little relation to the dictionary definition of visa.  Thus, the “introduction of the eVisa mark into the marketplace means that there are now two products, and not just one, competing for association with that word,” which the Ninth Circuit held to be “the quintessential harm addressed by anti-dilution law.”

The Ninth Circuit further noted that JSL has not presented evidence showing dilution was unlikely, and is not using the word visa for its literal dictionary definition. Rather, the prefix “e” does not distinguish the two marks any more than would the words “Corp.” or “Inc.” tacked onto the end. See Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1036 (9th Cir. 2007) (use of identical mark provides “circumstantial evidence” of dilution). Moreover, JSL has created a new word “eVISA,” which could form new and different associations with a user apart from the dictionary definition. By creating a new mark having a new meaning which is not obviously the dictionary meaning, JSL created a competing mark with the VISA mark that blurs the VISA mark.  In this way, the Ninth Circuit held that the eVisa mark diluted the VISA mark, and upheld the District Court’s grant of summary judgment to Visa International.

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One thought on “Ninth Circuit Finds Dilution by Blurring Despite Mark Also Having English Meaning

  1. So, words can now be effectively removed from the English language by simply claiming them as trademarked terms that have no association with the product they represent? (VISA credit card hawkers can now prevent me from establishing an online “eVisa” service for getting visas issued, for example?)

    This is impressively absurd.

    “Law that makes no sense is no law at all.”

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