Visa Int'l Serv. Ass'n v. JSL Corp. - 610 F.3d 1088 (9th Cir. 2010)

Rule:

A plaintiff seeking relief under federal anti-dilution law must show that its mark is famous and distinctive, that a defendant began using its mark in commerce after the plaintiff's mark became famous and distinctive, and that the defendant's mark is likely to dilute plaintiff's mark.

Facts:

Joseph Orr runs eVisa, a "multilingual education and information business that exists and operates exclusively on the Internet," at www.evisa.com. At least he did, until the district court enjoined him. Orr traces the name eVisa back to an English language tutoring service called "Eikaiwa Visa" that he ran while living in Japan. "Eikaiwa" is Japanese for English conversation, and the "e" in eVisa is short for Eikaiwa. The use of the word "visa" in both eVisa and Eikaiwa Visa is meant to suggest "the ability to travel, both linguistically and physically, through the English-speaking world." Orr founded eVisa shortly before his return to America, where he started running it out of his apartment in Brooklyn, New York. Visa International Service Association sued JSL Corporation, through which Orr operates eVisa, claiming that eVisa is likely to dilute the Visa trademark. The district court granted summary judgment for Visa, and JSL appealed.

Issue:

Did the district court err when it found as a matter of law that eVisa was likely to dilute the Visa trademark?

Answer:

No

Conclusion:

The appellate court held that dilution of Visa International’s mark by blurring was likely since Visa and eVisa were virtually identical, the common "e" prefix did not distinguish the marks, and two products would be competing for association with the word "Visa." Further, Visa was a strong mark which drew on positive mental associations with travel visas, and it was undisputed that the company's credit card was the world's top brand in financial services and online purchases. Also, the business was not using the word "visa" for its literal dictionary definition, but created a novel meaning for the word to identify a multilingual education and information business.