American Express Co. v. Goetz
85 U.S.P.Q. 2d (BNA) 1913, 515 F.3d 156, 2008 U.S. App. LEXIS 2421 (2008)
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Rule of Law:
A slogan used as the creative component of a business proposal offered for sale to potential clients, rather than to identify the source of the creator's own goods or services, does not constitute "use as a trademark" and fails to establish protectable trademark rights under the Lanham Act.
Facts:
- In the summer of 2004, Stephen Goetz, a corporate consultant, developed an idea for personalized credit cards and created the slogan 'My Life, My Card' to embody the concept.
- On July 30, 2004, Goetz mailed a proposal to American Express which included his personalized card concept and the line: '‘My Life, My Card’ American Express delivers personalized cards to its cardholders!'
- Goetz sent similar tailored proposals to other credit card companies, including Mastercard and Citigroup, and created a private internet-based demonstration of his concept that displayed the slogan.
- Around the same time, American Express's advertising agency, Ogilvy Group, independently conceived of the slogan 'MY LIFE. MY CARD.' on July 22, 2004, before Goetz's proposal was delivered.
- On September 7, 2004, Goetz registered the domain name www.mylife-mycard.com, and on September 8, he filed an application to register the mark with the U.S. Patent and Trademark Office.
- In early November 2004, American Express launched a major global advertising campaign prominently featuring the slogan 'MY LIFE. MY CARD.'
Procedural Posture:
- After Goetz demanded American Express cease using the slogan, American Express filed a declaratory judgment action against Goetz in the United States District Court for the Southern District of New York.
- Goetz asserted counterclaims against American Express for misappropriation and trademark infringement.
- The district court granted American Express's motion for summary judgment and dismissed Goetz's counterclaims.
- Goetz (appellant) filed a timely appeal of the district court's judgment to the United States Court of Appeals for the Second Circuit, where American Express was the appellee.
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Issue:
Does presenting a slogan as part of a business proposal to potential clients, with the intent that the client would use the slogan to market a product, constitute "use as a trademark" sufficient to establish the creator's own trademark rights in that slogan?
Opinions:
Majority - Per Curiam
No. Presenting a slogan as part of a business proposal for a client's potential use does not constitute 'use as a trademark' sufficient to establish the creator's own trademark rights. Trademark law protects symbols that identify the source of a good or service, not the creative content of the work itself. Here, Goetz used the slogan 'My Life, My Card' as the creative product he was offering to sell to credit card companies, not as a mark to identify the source of his own consulting or software services. His proposals consistently paired the slogan with the potential client's name (e.g., American Express), indicating it was intended for their use. The court distinguished this from Goetz's use of the 'Mez Design' logo, which clearly served to identify his company as the source of the proposal. Furthermore, Goetz's 'analogous use' claim fails because his activities were limited to private communications with a few companies and were not 'open and notorious' enough to associate the slogan with him in the public mind.
Analysis:
This decision reinforces the fundamental principle that trademark rights are acquired through actual use in commerce to identify the source of goods or services, not merely through conception and limited, private promotion. It clarifies the distinction between a mark used to brand one's own business and a creative work (like a slogan) that is itself the product being sold. The ruling makes it significantly harder for advertising agencies, consultants, and other creative professionals to claim trademark ownership over slogans they develop for their clients, solidifying the rights of the end-user company that ultimately uses the mark in the marketplace and invests in its public recognition.
