Monday, February 4, 2008

Second Circuit affirms lower court decision of no trademark infringement by American Express over “MY LIFE. MY CARD.”

The Second Circuit handed down a per curium decision today which underscores the distinction between copyright and trademark law. See American Express Co. v. Goetz, Appeal No. 06-2184 (2nd Cir. February 4, 2008) (per curiam). A copy of the decision can be downloaded here. News articles on the decision can be found at CNN and Forbes.

At issue in the case was American Express’ use of the slogan “MY LIFE. MY CARD.” in its celebrity driven marketing campaign featuring such celebrities as Tiger Woods and Ellen DeGeneres promoting their use of an American Express card. Goetz claimed that he had senior trademark rights to the slogan over American Express, but the Court of Appeals sided with American Express finding that Goetz had not used the slogan as a trademark, and thus did not have any senior trademark rights.

In the summer of 2004, Stephen G. Goetz, the president of Gardner Design Group, LLC (“Goetz”), while working as a corporate consultant for a company called Mez Design, came up with an idea to enable credit card customers to personalize their card by choosing a photograph to be printed on the face of the card. Goetz developed some proprietary software and sought to license or sell the software to credit card companies. To promote his idea to credit card companies, Goetz created the slogan “My Life, My Card.” On July 30, 2004, Goetz mailed a proposal to American Express with a line reading: "'My Life, My Card' American Express delivers personalized cards to its cardholders!" Goetz sent similar proposals to Mastercard, Citigroup, Kessler Financial Services, and Metavante. Goetz also set up an online demonstration of his personalized card concept which displayed the slogan My Life, My Card.. On September 7, 2004, Goetz registered the domain name and the next day, filed a Section 1(a) application (although current basis is now Section 1(b)) with the USPTO to register the mark MY LIFE, MY CARD (for computer software for financial credit card and debit card content management). The mark was published for opposition on August 8, 2006, and an opposition filed by American Express the same day. See American Express Marketing and Development Corp. v. Stephen G. Goetz, Opposition No. 91172239 (T.T.A.B.). On November 3, 2005, Goetz also filed another Section 1(a) application to register the mark MY LIFE, MY CARD (for credit card marketing for others and credit card services), but prosecution has been suspended pending the disposition of two of American Express’ application as well as one application by Advanta (for MY CARD MY WAY) .

Also during the summer of 2004, American Express hired an ad agency named The Ogilvy Group to develop a new American Express marketing campaign. On July 22, 2004, Ogilvy proposed the “MY LIFE. MY CARD” concept to American Express, and after receiving a favorable response, developed several advertisements based around the slogan. Ogilvy's outside counsel conducted a preliminary trademark search on July 29th to determine the availability of the slogan as a service mark in the United States. This was followed by a full trademark search on July 31st (approx. two days before Goetz’s proposal to American Express was delivered). Neither search unveiled any references to Goetz.. On September 1, 2004, American Express registered the domain name On September 15, 2004, American Express filed a Section 1(b) intent-to-use trademark application with the USPTO to register the mark MY LIFE. MY CARD (for four classes of services including credit card services and travel agency services). The ad campaign with the “My Life. My Card.” slogan was formally launched in early November 2004.

When Goetz demanded that American Express cease and desist using the “My Life. My Card.” slogan, American Express filed a declaratory judgment action in the United States District Court for the Southern District of New York seeking a declaration that it has not misappropriated the slogan and that it was not infringing any trademark rights by Goetz. See American Express Company v. Goetz et al, Case No. 05 Civ. 01555 (S.D.N.Y. Filed February 4, 2005).

On February 24, 2006, District Court Judge Lewis A. Kaplan granted summary judgment in favor of American Express and dismissed Goetz's counterclaims for misappropriation and trademark infringement. The district court held that Goetz had no valid protectable trademark rights in his “My Life, My Card” slogan that were senior to American Express’s rights to MY LIFE. MY CARD. Goetz filed a timely appeal of the decision as well as a district court ruling denying his motion for greater discovery.

Goetz's argument on appeal was that the district court erred in ruling that he had not used the “My Life, My Card” slogan as a trademark. However, after reviewing the facts de novo, the Court of Appeals affirmed the district court’s ruling.

Trademark Use
In finding that Goetz did not use his the “My Life, My Card” slogan as a trademark, the court started its analysis by noting the difference between trademark law and copyright law – copyright law protects the content of a creative work, whereas trademark law protects the words, names, symbols or devices used to identify the creative work in the marketplace and to prevent confusion as to the source of the creative work. See 15 U.S.C. § 1127 and 17 U.S.C. §101, 102. In short, a mark that does not perform the role of identifying a source is not a trademark. See EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64 (2nd Cir. 2000).

The court noted that a mark can be a creative work by one person and a source identifier by another. When an ad agency develops a slogan for a client, the slogan is the ad agency’s creative work, while the client’s use of the slogan can become a source identifier. The court noted the TTAB’s long-standing recognition of the fact that “slogans cannot be registered as marks by the advertising agency, even if they would be subject to registration by the end users of the marks” because “the slogan does not identify and distinguish the services of the advertising agency, but rather is the creative work itself.” Slip op. at 7 (citing In re Admark, Inc., 214 U.S.P.Q. 302, 303 (T.T.A.B. 1982); In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620 (Fed. Cir. 1987); In re Local Trademarks, Inc., 220 U.S.P.Q. 728, 730 (T.T.A.B. 1983)).

In this case, Goetz’s use of the “My Life, My Card” slogan was as a component of his business proposal to credit card companies, and not as a mark designating the origin of any goods or services that he was offering. Because Goetz offered the slogan as a complement to the card personalization concept and software he proposed to sell, the court found his claim to be “no better than that of an advertising agency that offers its clients a marketing concept to enhance their sales.” Slip op. at 8.

The court further cited to Goetz's own letters and proposals to card companies as evidence that he was not using the slogan as a trademark – the “My Life, My Card” slogan never appears as a stand-alone logo nor is the phrase ever followed by a reference to Goetz himself or his company. The court found that such evidence shows that Goetz did not intend for the “My Life, My Card” slogan to be associated with his services, but rather as a slogan to interest credit card companies into using his personalized cards concept and software.

The court also cited to Goetz's use of the Mez Design logo on his letters and proposals as an example of “typical trademark usage” (i.e., that logo was used much more so in a way as to designate Mez Design as the source of Goetz's proposal) which further illustrates that Goetz did not intend for the “My Life, My Card” slogan to be a trademark:

Goetz plainly desired readers to associate his goods or services with the Mez Design mark. My Life, My Card, by contrast, appeared in the section of Goetz’s correspondence in which he described the content of his proposal. In sum, Goetz employed the slogan My Life, My Card to generate interest among potential licensee credit card companies and not to differentiate or identify the origin of his goods or services. In such circumstances, the slogan served as “a mere dvertisement for itself as a hypothetical commodity.” Silberstein v. Fox Entm’t Group, Inc., 424 F. Supp. 2d 616, 633 (S.D.N.Y. 2004).

Slip op. at 9-10.

As such, the court found the district court’s dismissal of Goetz's trademark claim on the ground that he did not use the slogan as a trademark to be proper.

Analogous Use
The court initially noted that Goetz could not have made any actual use of the “My Life, My Card” slogan as a service mark because “Goetz's services were wholly hypothetical when he sent his promotional materials to the credit card companies.” Slip op. at 10-11. The court stated that “it cannot be said that a service mark is actually used if it is displayed in an advertisement for services that are non-existent or will only hypothetically be available at some point in the future. See, e.g., Greyhound Corp. v. Armour Life Ins. Co., 214 U.S.P.Q. 473, 474-75 (T.T.A.B. 1982).” Slip op. at 10.

Having laid this foundation, the court next addressed Goetz’s argument that even if he did not actually use the “My Life, My Card” slogan as a trademark, his activities were analogous to trademark use (the so-called “analogous use doctrine”). Goetz cites Diarama Trading Co. v. J. Walter Thompson U.S.A., Inc., No. 01 Civ. 2950, 2005 WL 2148925 (S.D.N.Y. Sept. 6, 2005) and Housing & Services, Inc. v. Minton, No. 97 Civ. 2725, 1997 WL 349949 (S.D.N.Y. June 24, 1997), in support of the assertion that analogous use is sufficient to establish trademark rights in the absence of actual use.

However, the court rejects Goetz’s argument finding that his use of the “My Life, My Card” slogan does not qualify as "analogous use" because analogous use must be use that is “open and notorious” (citing Minton at *4) – the use must be of such a nature and extent that the mark becomes popularized in the public mind so that the relevant segment of the public identifies the marked goods with the mark's adopter

In this case, Goetz used the slogan only in a few communications with credit card companies. There was no public exposure of the mark, and Goetz himself indicated in some e-mails that he wanted to keep the project and his website low profile. As such, Goetz’s use was neither open nor notorious and had not become associated in the public mind with Goetz.

Noting Goetz’s complete reliance on analogous use as his basis for any trademark rights and Goetz’s complete lack of any actual use of the slogan as a trademark, the court added that the analogous use doctrine “has not been stretched so far as to obviate the requirement that Goetz show eventual actual use.” See De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate Inc., 440 F. Supp. 2d 249, 265 n.14 (S.D.N.Y. 2006). In other words, for Goetz’s analogous use to be deemed trademark use, it must be within a commercially reasonable time prior to actual use for such use to be considered analogous use (citing WarnerVision Entm't Inc. v. Empire of Carolina Inc., 915 F. Supp. 639, 646 (S.D.N.Y. 1996), vacated on other grounds 101 F.3d 259 (2d Cir. 1996).

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