Visa International Service Association v. JSL Corporation

United States Court of Appeals, Ninth Circuit
610 F.3d 1088 (2010)

ELI5:

Rule of Law:

The use of a famous trademark that is also a common dictionary word as part of a new trademark for an unrelated product constitutes dilution by blurring, as it creates a new commercial association for the word, thereby weakening the original mark's distinctiveness.

Facts:

Joseph Orr operated an online multilingual education and information business named 'eVisa' through his company, JSL Corporation.
The name 'eVisa' was derived from a prior business Orr ran in Japan called 'Eikaiwa Visa,' where 'Eikaiwa' is Japanese for English conversation.
Orr intended the word 'visa' in his business name to suggest the ability to travel, both linguistically and physically.
Visa International Service Association owns and operates the 'Visa' trademark, which is a famous and distinctive mark for financial and payment card services.

Procedural Posture:

Visa International Service Association sued JSL Corporation in U.S. District Court, alleging trademark dilution.
The district court granted summary judgment in favor of Visa.
The district court issued an injunction preventing JSL Corporation from using the 'eVisa' mark.
JSL Corporation (appellant) appealed the district court's decision to the U.S. Court of Appeals for the Ninth Circuit, with Visa International (appellee) defending the judgment.

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Issue:

Does the use of the mark 'eVisa' for an online education service create a likelihood of dilution by blurring of the famous 'Visa' trademark, even though 'visa' is a common dictionary word?

Opinions:

Majority - Kozinski, Chief Judge

Yes. The use of 'eVisa' creates a likelihood of dilution by blurring because it weakens the Visa mark's ability to exclusively evoke its associated financial services in the minds of consumers. Dilution by blurring occurs when a mark previously associated with one product also becomes associated with a second. The marks 'Visa' and 'eVisa' are effectively identical, as the 'e' prefix merely denotes an electronic or online version of a brand and does not create sufficient distinction. Although 'visa' is a common English word, JSL is not using it in its descriptive, dictionary sense (e.g., 'Orr's Visa Services'), but is instead creating a new and distinct trademark meaning for the word to identify its educational business. This 'multiplication of meanings' is the quintessential harm that anti-dilution law is designed to prevent, regardless of the user's intent or whether consumers are confused about the source of the services.

Analysis:

This case clarifies the application of trademark dilution law to marks that are also common English words. The court establishes a crucial distinction between using a common word in its descriptive, dictionary sense versus using it as a trademark for a different good or service. This decision strengthens protections for famous marks like 'Apple' or 'Shell,' confirming that the prevalence of the word's non-trademark use does not diminish its strength as a mark. It signals that junior users cannot shield themselves from a dilution claim simply by arguing their mark is based on a common word, especially when the marks are nearly identical and the senior mark is highly famous.

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