Vincent Doré is a JD/MBA candidate at Osgoode Hall Law School and Schulich School of Business.

In a recent trademark dilution case, Ninth Circuit Chief Judge Alex Kozinski wrote an eloquent opinion that clearly and explicitly delineates where ordinary use ends and dilution begins. The question in this recent Ninth Circuit case (Visa Int’l Serv. Assoc v. JSL Corp.) is whether the mark eVisa, created by JSL Corp., dilutes the “Visa” mark of the international credit card conglomerate by blurring the latter’s association with the word. In the Chief Judge’s own words, the case considers “the application of anti-dilution law to trademarks that are also common English words.”

The operator of eVisa, Joseph Orr, created the “multilingual education and information business” based on an English language tutoring service he ran while living in Japan, called “Eikaiwa Visa.” With the Japanese word “Eikaiwa” meaning English conversation, the eVisa mark is meant to suggest “the ability to travel, both linguistically and physically, through the English-speaking world.” On the eVisa website, the company’s services are divided into the categories “Travel Passport,” “Language Passport” and “Technology Passport.” Therefore, while the word “visa” in eVisa does not employ the dictionary meaning of the word in the strictest sense, it certainly comes very close, making this case significant in the development of the common law. As described by the Chief Judge: “Visa plays only weakly off the word’s association with international travel, whereas JSL embraced the metaphor with gusto.”

In deciding the case, Chief Judge Kozinski admits that the eVisa mark does employ “the word’s common English meaning.” However, he goes on to say that “these allusions to the dictionary definition of the word visa do not change the fact that JSL has created a novel meaning for the word: to identify a ‘multilingual education and information business.’ This multiplication of meanings is the essence of dilution by blurring…the word becomes associated with two different products, rather than one.” For the purpose of contrast, the Chief Judge provides the example of “Orr’s Visa Services” as one mark which would not dilute the Visa mark because”the word elicits only the standard dictionary definition.”

In the end, the Ninth Circuit upheld the district court’s decision to enjoin JSL’s use of the eVisa mark, and the court’s stance on anti-dilution law came into focus: to use a word in its ordinary sense, nothing short of a dictionary definition will be permitted.

Chief Judge Kozinski asks: “She sells sea shells by the sea shore. That’s swell, but how about Shell espresso, Tide motor oil, Apple bicycles and Playboy computers?” We now have the answer, and why each of those examples differs from Orr’s Apple Orchard and Orr’s Camel Breeders. Trademark owners could not have asked for greater protection from brand dilution.

For another brief commentary on the case, click here.

Posted in Famous Marks, IP, Trademarks