Visa v. JSL: Trademarks | Outside IP Counsel

Judge Kozinski held that eVISA likely dilutes the famous VISA mark, explaining how blurring erodes a brand even when it borrows an everyday word.

Dilution law protects the strongest marks against a subtle harm: not confusion, not competition, but the slow erosion of a brand’s singular hold on the public mind. Visa International Service Ass’n v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010), is the modern teaching case on that harm. Writing for the panel and filed June 28, 2010, Chief Judge Alex Kozinski held that the mark eVISA, used for what its founder called a “multilingual education and information business that exists and operates exclusively on the Internet,” was likely to dilute the famous VISA payment brand by blurring, and he did so in a compact opinion that has become the standard citation for how blurring works under the Trademark Dilution Revision Act.

At a glance

Case: Visa International Service Ass’n v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010).
Decided: June 28, 2010; opinion by Chief Judge Alex Kozinski; summary judgment for Visa affirmed.
Holding: eVISA is likely to dilute the famous VISA mark by blurring, and a mark built on a common dictionary word is still sufficiently distinctive for anti-dilution protection where the famous mark itself plays only weakly off the word’s ordinary meaning.
Status: Final.

The mark that borrowed an ordinary word

Joseph Orr ran eVisa, a multilingual education and information business operating exclusively on the Internet at www.evisa.com, through JSL Corporation. The name traced back to “Eikaiwa Visa,” an English-language tutoring service Orr had run while living in Japan, “Eikaiwa” being Japanese for English conversation and the “e” being short for Eikaiwa. Visa International, owner of the federally registered and famous VISA mark for financial services, sued under the federal anti-dilution statute, 15 U.S.C. § 1125(c). JSL did not seriously contest two of the three threshold elements. It conceded that VISA is famous and distinctive and that JSL began using eVisa in commerce only after VISA had achieved its renown. The single contested question was whether eVisa was likely to dilute VISA. The district court granted summary judgment for Visa, and the Ninth Circuit affirmed.

Blurring under the TDRA

The Trademark Dilution Revision Act of 2006 defines dilution by blurring as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(B). Unlike ordinary infringement, dilution does not turn on likelihood of confusion or on the parties competing. The statute lists six non-exclusive factors that bear on blurring: the degree of similarity between the marks, the degree of inherent or acquired distinctiveness of the famous mark, the extent to which the owner engages in substantially exclusive use, the degree of recognition of the famous mark, whether the junior user intended to create an association with the famous mark, and any actual association between the marks. The court did not march through all six. It rested on similarity, distinctiveness and recognition, citing § 1125(c)(2)(B)(i), (ii) and (iv), and noted that while likelihood of dilution is normally a fact question, summary judgment is available where no reasonable fact-finder could fail to find it. Kozinski’s account of what blurring actually is stays close to Mattel v. MCA Records: the impairment of a mark’s one-to-one link with its source. A famous mark identifies a single origin. When a second user attaches the same term to a different business, the term brings to mind two products rather than one. The court also confirmed that a plaintiff need not produce surveys or expert testimony to show likely dilution; it may rely entirely on the characteristics of the marks.

The dictionary-word problem

JSL’s central defense was that “visa” is an ordinary English word denoting a travel authorization, so no one could monopolize it. Kozinski took the point seriously and explained why it did not save eVisa. A mark can be diluted even when it consists of a common word, so long as the mark is distinctive and famous as a trademark. The key, in the court’s analysis, was that the VISA brand plays only weakly off the dictionary meaning of the word. The mark draws on positive associations with travel visas, which make difficult transactions simple and open up new experiences, and those are good attributes for a credit card. But the associations are remote enough that, as the court put it, “the word visa wouldn’t make people think of credit cards if it weren’t for the Visa brand.” Kozinski contrasted Thane International v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002), where the court had rejected Trek’s dilution claim in part because the mark played heavily off the dictionary meaning of “trek,” suggesting bicycles built for long journeys, and because the Star Trek series had already worked the same word into a trademark. Visa’s use, by contrast, plays only weakly off the dictionary meaning, and JSL presented no evidence that a third party had used the word as a mark. The court also stressed that the sheer prevalence of ordinary, non-trademark use of a word does not undermine its uniqueness as a mark: there are many camels but just one Camel, many tides but just one Tide.

JSL, for its part, did gesture at the travel meaning, and heavy-handedly. Its site depicted the eVisa mark next to a booklet resembling a passport and sorted its offerings into “Travel Passport,” “Language Passport” and “Technology Passport.” The court accepted that JSL’s allusions to international travel were “more obvious and heavy-handed than Visa’s.” That did not save it. Those allusions did not change the fact that JSL had created a novel meaning for the word, using it to identify a multilingual education business, and that multiplication of meanings is the essence of blurring. As the opinion put it, blurring occurs “even when use of the word also gestures at the word’s dictionary definition.”

Kozinski did mark a real boundary, but a narrower one than brand appeal versus plain meaning. Visa conceded it could not stop JSL from opening “Orr’s Visa Services,” any more than Apple could shut down “Orr’s Apple Orchard.” Using the word for its literal dictionary definition creates no new association with a product; it merely evokes the meaning the word already has, “as to which no one may claim exclusivity.” Kozinski warned that conferring anti-dilution rights over common English words would otherwise be untenable, since “whole swaths of the dictionary could be taken out of circulation.” What defeated JSL was not that it ignored the travel meaning, but that it used the word in commerce as a trademark for something other than a travel visa.

What the decision settled

Visa v. JSL is cited constantly for two propositions. First, dilution by blurring is fundamentally about impairing a mark’s distinctiveness by adding a second trademark user, a framing that keeps courts focused on the statutory injury rather than drifting toward confusion analysis. Second, common-word marks are not disqualified from dilution protection. Owners of famous marks that happen to coincide with dictionary words, and there are many, from APPLE to AMAZON to VISA, retain robust protection where their fame rests on a trademark meaning distinct from the ordinary one. The opinion is short, but its analytical clarity is why it anchors post-TDRA blurring doctrine in the Ninth Circuit and beyond.

Open questions

How weak must the dictionary link be? The court emphasized that VISA plays only weakly off the ordinary meaning of the word. Just how much a famous mark can lean on a word’s literal sense before losing dilution protection is not precisely fixed.
When is a junior use genuinely descriptive? The court drew the line at “Orr’s Visa Services,” a use that evokes only the dictionary meaning. Real-world branding often sits between that and a full trademark use of the word, and where a mixed use falls will be fact-bound.
How much weight does intent carry? The statute lists the junior user’s intent to associate as a factor, and the court held that Orr’s statement that he did not intend to dilute was not enough on its own, because “good intentions alone do not negate a showing of a likelihood of dilution.” How much a junior user’s state of mind can ever move the analysis is left to later cases.

Implications for brands and businesses

Fame built on a common word is still protected. If your famous mark coincides with a dictionary term but your brand meaning is distinct from the ordinary sense, dilution law can still stop a second prominent user from adopting it.
Descriptive use is a narrow shelter. A junior user cannot escape dilution simply because the mark is an English word, and cannot escape it by also nodding at the word’s ordinary meaning. The shelter covers using the word for its dictionary sense alone, not using it as a trademark for some other good or service.
Dilution does not need confusion. Famous-mark owners can act against blurring even when the junior user sells unrelated goods and no one is confused about source. Preserve evidence of your mark’s fame and substantially exclusive use.
Audit new brands against famous marks. Before adopting a term that overlaps with a household name, assess whether you would be using it as a trademark for a different good or service rather than for its plain meaning. That distinction can decide a dilution claim, and good intentions will not cure it.

Frequently asked questions

What is dilution by blurring? Dilution by blurring is the gradual weakening of a famous mark’s ability to identify a single source when another business uses the same or a similar term. It does not require any likelihood of confusion or competition. The injury is that consumers begin to associate the famous mark with more than one thing, whittling away the mental one-to-one link between the mark and its owner.

Can a trademark built on a common word be diluted? Yes. In Visa v. JSL the Ninth Circuit held that VISA was sufficiently distinctive because the card brand plays only weakly off the ordinary meaning of visa, and no third party had used the word as a mark. A famous mark that borrows a common word is still protected against a junior user who introduces a second trademark use of that word for some other good or service, even if that junior use also gestures at the word’s dictionary meaning. What falls outside dilution law is using the word purely for its literal dictionary sense, such as an actual travel-visa service.

Did JSL argue that eVisa referred to travel documents? Yes, and the court accepted that JSL’s travel allusions were more obvious and heavy-handed than Visa’s own. Its site showed the mark beside a passport-like booklet and used categories such as “Travel Passport.” It lost anyway. Gesturing at the dictionary meaning does not prevent blurring, because JSL still created a novel meaning for the word, using it as a trademark to identify a multilingual education business. The court affirmed summary judgment for Visa.