American Express gets credit for MY LIFE. MY CARD

In American Express Co v Goetz (Case 06-2184, February 4 2008), the US Court of Appeals for the Second Circuit has affirmed a district court's decision finding that Stephen Goetz's use of the slogan 'My Life, My Card' did not confer any enforceable rights senior to American Express Co's MY LIFE. MY CARD trademark. The court's decision is notable not only because it underscores the distinctions between trademark and copyright law, but also because it provides a dramatic illustration of how the marketing copy of a supplier of intermediate goods and services does not constitute trademark use.

At issue on appeal was whether Goetz's use of the slogan 'My Life, My Card' should be entitled to trademark protection. Goetz had developed proprietary software that enabled credit card companies to create personalized cards for their customers. In order to license or sell his credit card personalization concept and software, Goetz established a website and mailed proposals to several credit card companies. Prominently displayed on each proposal and accompanying cover letter was Goetz's company logo. Each proposal also included the tagline 'My Life, My Card', followed by the name of the credit card company to which it was sent. The tagline in the proposal mailed to American Express read: "'My Life, My Card' American Express delivers personalized cards to its cardholders!" However, Goetz's tagline was never displayed to credit card consumers.

Eight days before Goetz had mailed his proposals to American Express, American Express received a pitch from an advertising agency that it had hired to develop a trademark for a new marketing campaign. The mark proposed by that advertising agency was: MY LIFE. MY CARD. Goetz never contested American Express' independent conception of the slogan. However, in response to the launch of its global marketing campaign, Goetz demanded that American Express cease using the slogan. Consequently, American Express sought a declaratory judgment that it had not misappropriated Goetz's slogan and that Goetz lacked a viable claim for infringement. The district court granted summary judgment in favour of American Express. Goetz appealed.

In order to acquire trademark protection, a combination of words must identify and distinguish goods or services and indicate their source. Depending on the circumstances of its use, a slogan may identify the source when used by one party, but do no more than constitute a non-source identifying creative work when used by another party. This distinction typically arises in cases where advertising agencies develop slogans for their clients' use in marketing products. In those cases, the slogan is considered to be the advertising agency's copyrighted creative work; however, the slogan subsequently becomes the client's enforceable trademark once it is used as an identifier of source.

Applying those cases to Goetz's promotion of his credit card personalization concept and software, the court held that "his claim is no better than that of an advertising agency". The court then pointed out that Goetz's slogan "never appears as a standalone logo and… is never followed by a reference to Goetz himself or his company". Consequently, the court regarded Goetz's proposals as merely soliciting the credit card companies' interest in "a slogan that would identify personalized cards with whatever company elected to make [Goetz's] product available to its customers". Therefore, the court concluded that Goetz's slogan was "a mere advertisement for itself as a hypothetical commodity", rather than a trademark that differentiated or identified the origin of his software and services.

In response to Goetz's arguments that he had at least used the slogan in a manner that is analogous to a trademark or service mark, the court noted that in order to be considered analogous, a use must be "of a nature and extent" that the relevant segment of the public identifies the marked goods with the mark's adopter. Because Goetz sent his proposals only to credit card companies, the court held that "'My Life, My Card' never came to be associated with Goetz in the public mind." Therefore, Goetz had not actually used the slogan 'My Life, My Card' as a trademark and the Second Circuit affirmed the district court's dismissal of Goetz's claim.

Howard J Shire, Kenyon & Kenyon LLP, New York, with the assistance of David Silverstein

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