US Appeals Court Denies Use of Mark “eVISA” to Language Tutoring Service

On June 28, 2010, in Visa International Service Association v JSL Corporation, (CV-01-00294), the US Court of Appeals for the Ninth Circuit (Court) affirmed the District Court’s ruling of summary judgment against the appellant JSL Corporation (JSL), finding that JSL was liable for diluting the respondent’s trade-mark “VISA” through JSL’s use of the trade name “eVISA” in association with its English-language Internet tutoring service. The issue that JSL raised on appeal was whether the use of the trade name eVISA was likely to cause dilution. JSL contended that the eVISA trade name was meant to “connote the ability to travel, both linguistically and physically, through the English-speaking world” and therefore uses the word’s common English meaning. JSL’s web site depicted the eVISA trade name next to a booklet that looked like a passport, and it divided the services offered into the categories “Travel Passport,” “Language Passport” and “Technology Passport.” The Court focused on the issue whether dilution had occurred by blurring, a process whereby a famous mark’s distinctiveness is impaired because of a similarity it shares with a trade name, and it relied primarily on the enumerated factors set out in USC § 1125(c)(2)(B)(i), (ii), and (iv). Chief Judge Kozinski, writing for the Court, held that:

1. the marks VISA and eVISA were “effectively identical”,
2. the word “visa” would not make consumers think of credit cards but for the existence of the VISA brand, and the word therefore has significant acquired distinctiveness, and
3. the respondent’s evidence proved that it is the world’s top brand in financial services and it is the most commonly used method of payment for online purchases.

The Court also held that the trademark VISA was so distinctive that its use in any context other than travel visas would undoubtedly have the effect of dilution by blurring. Summary by: Darren Hall