EVISA decision vacated and remanded following Moseley

In the unpublished decision of Visa International Service Association v JSL Corporation (CV-01-00294-LRH/LRL), the US Court of Appeals for the Ninth Circuit has (i) vacated a district court decision that granted Visa International an injunction barring JSL Corporation from using the mark EVISA and registering the domain name 'evisa.com', and (ii) remanded the case for reconsideration in light of the Moseley decision.

Upon discovering that JSL was using the mark EVISA and the domain name 'evisa.com' to market its Eikaiwa Visa English language school in Japan, Visa International sought summary judgment against JSL based on (i) dilution by blurring pursuant to the Federal Trademark Dilution Act (FTDA), and (ii) cybersquatting. The district court observed that Visa International had continuously used the registered VISA mark since 1976, and that the VISA mark was one of the most recognized and famous marks in the world. The court found that in light of the famous nature of the VISA mark and JSL's use of the EVISA mark in commerce, there was a likelihood of dilution. Consequently, the district court entered an injunction barring JSL from using or registering the mark EVISA or the domain name 'evisa.com' (see EVISA mark dilutes VISA, rules court). JSL appealed.

The Ninth Circuit vacated the district court ruling and remanded the case for reconsideration in light of the Moseley decision, which the US Supreme Court issued while JSL's appeal was pending. The Moseley court held that, to prevail on a FTDA claim, the plaintiff must establish actual dilution rather than the likelihood of dilution (see Federal Trademark Dilution Act requires proof of actual harm).

The practical results of this decision are evident. In order to obtain a favourable judgment under the FTDA, a plaintiff must now proffer actual evidence of dilution, proving the mark in question has been either blurred or tarnished by the actions of the defendant. As such, a plaintiff seeking an injunction based on the FTDA will need to conduct consumer surveys, prove loss of sales or submit circumstantial evidence that demonstrates actual dilution.

James E Bauersmith, Piper Rudnick LLP, Chicago

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