Use of identical mark is circumstantial evidence of dilution

United States of America
In Visa International Service Association v JSL Corporation (Case 08-15206, June 28 2010), the US Court of Appeals for the Ninth Circuit has affirmed a district court’s decision granting summary judgment in favour of Visa International Service Association with respect to Visa’s claim of dilution. 
Visa claimed that JSL Corporation’s use of the marks eVISA and eVISA.COM diluted its famous VISA mark, and JSL counterclaimed for trademark infringement. After the district court granted summary judgment in favour of Visa, the Ninth Circuit remanded, and the district court again granted summary judgment in favour of Visa. While JSL’s appeal was pending, the Trademark Dilution Revision Act (TDRA) was enacted. Applying the TDRA, the district court granted summary judgment in favour of Visa (for the third time) on likelihood of dilution by blurring. 
The parties’ fight centres on a subtlety of semantics - the difference between dictionary and trademark significance. JSL used the mark eVISA in connection with multilingual educational services conducted via its website at ''. JSL contended that it had no intent to trade off the goodwill of the VISA mark for credit card services. Nevertheless, JSL did not dispute that the VISA mark was famous or that it began using the eVISA mark in commerce after VISA achieved its renown.
Comparing the marks, the Ninth Circuit concluded that the marks were “effectively identical”, because the prefix 'e' did no more to distinguish two marks than would the words 'Corp' or 'Inc' tacked onto the end. The Ninth Circuit cited its own case law for the proposition that use of an identical mark is circumstantial evidence of dilution. Given the strength of the VISA mark and the similarity between the two marks, the court found that Visa was not even “required to go to the expense of producing expert testimony or market surveys; it may rely entirely on the characteristics of the marks at issue”. Thus, the Ninth Circuit did not consider Visa’s expert testimony or surveys because such evidence was necessary only in “marginal cases”. This was not the case here because JSL presented nothing other than an assertion that it did not intend to dilute the VISA mark.
JSL’s strongest argument was that it used eVISA to play off the dictionary definition of 'visa' to connote the ability to travel linguistically and physically through the English-speaking world. The Ninth Circuit conceded that Visa does not own the word 'visa' with regard to travel visas. However, because JSL used that word in a trademark sense to refer to services other than a travel visa, the word would become associated with two products, resulting in dilution by blurring. The court added that “[t]his is true even when use of the word also gestures at the word’s dictionary definition”. 
Let this be a lesson for marketing teams: be wary of adopting a mark that steps into the shadow cast by another’s famous mark, even when the mark plays off the word’s dictionary definition. Visa v JSL suggests that, if fame is shown, and if the marks are identical or “effectively identical”, likelihood of dilution is almost presumed. Issues of commercial context, expert testimony, market surveys and intent took a back seat in this case when they came face-to-face with VISA’s fame and the “effectively identical” nature of the marks.
Susan M Natland and Cindy N Nguyen, Knobbe Martens Olson & Bear, Irvine

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