American Express Co. v. Goetz
2008 WL 281823 (2d. Cir. 2008)
Decided February 4, 2008
Facts: Goetz, the president of Gardner Design Group, used the slogan “My card, my life†in sales materials that he pitched to several major credit card companies in the summer of 2004. He used the slogan to market new software designed to enable credit card holders to personalize their cards by printing photos on them. Goetz created a web tutorial introducing his software at http://mylifemycard.hanscrebs.com. On September 7, 2004, he registered www.mylife-mycard.com and filed an application with the US Patent Office for trademark registration. Goetz specifically claims that he mailed the photo software proposal to American Express on July 30, 2004, but never received a reply. American Express claims that it employed an advertising agency to generate a new campaign for it during the summer of 2004. This agency selected the theme of “My life, my card.†American Express subsequently conducted a full patent search and found no registered patent. Thus, in September of 2004, the company registered the domain name www.mylifemycard.com and filed a patent claim with the US Patent Office. Following American Express’s launch of the "My card, my life" campaign, it became involved in this lawsuit.
Procedural History: American Express brought a declaratory action in district court seeking a decision that it had not misappropriated Goetz’s slogan “My life, my card.†The district court granted summary judgment to American Express after examining three grounds: trademark protection, service mark protection, and analogous use doctrine. Goetz appealed.
Rules:
The Lanham Act defines trademark or service mark as a words or symbols that are employed to identify goods/services or indicate their source.
Trademark protects only words, symbols, and devices that identify the source of a work; the content of the work is protected under copyright law. EMI Catalogue P’ship v. Hill, 228 F.3d 56, 63 (2d. Cir. 2000).
Advertising agencies cannot obtain trademarks for slogans sold to end users because these works identify the end-user’s product, rather than the agency’s services. In re Admark, Inc., 214 U.S.P.Q. 302, 303.
The analogous use doctrine states that a party may be entitled to trademark protection if his uses were similar to trademark, even if he cannot meet the technical requirements. Diarama Trading Co. v. J. Walter Thompson U.S.A. However, the analogous use must be “open and notorious.†Housing Services, Inc. v. Minton.
Holding: The court concludes that Goetz does not have a valid trademark or service mark claim for “My card, my life†because the slogan does not identify any of Goetz’s services. He merely used the slogan as part of his advertising materials and never displayed it to the public. In this respect, Goetz’s use is like that of an advertising agency that sells a slogan to an end-user. Similarly, the court determines Goetz’s analogous use claim fails because he did not use the slogan in an “open and notorious†manner. He kept such a low profile for the project that it never became publicly associated with him or his business. Therefore, the Second Circuit affirmed the district court’s holding in American Express's favor.
2008 WL 281823 (2d. Cir. 2008)
Decided February 4, 2008
Facts: Goetz, the president of Gardner Design Group, used the slogan “My card, my life†in sales materials that he pitched to several major credit card companies in the summer of 2004. He used the slogan to market new software designed to enable credit card holders to personalize their cards by printing photos on them. Goetz created a web tutorial introducing his software at http://mylifemycard.hanscrebs.com. On September 7, 2004, he registered www.mylife-mycard.com and filed an application with the US Patent Office for trademark registration. Goetz specifically claims that he mailed the photo software proposal to American Express on July 30, 2004, but never received a reply. American Express claims that it employed an advertising agency to generate a new campaign for it during the summer of 2004. This agency selected the theme of “My life, my card.†American Express subsequently conducted a full patent search and found no registered patent. Thus, in September of 2004, the company registered the domain name www.mylifemycard.com and filed a patent claim with the US Patent Office. Following American Express’s launch of the "My card, my life" campaign, it became involved in this lawsuit.
Procedural History: American Express brought a declaratory action in district court seeking a decision that it had not misappropriated Goetz’s slogan “My life, my card.†The district court granted summary judgment to American Express after examining three grounds: trademark protection, service mark protection, and analogous use doctrine. Goetz appealed.
Rules:
The Lanham Act defines trademark or service mark as a words or symbols that are employed to identify goods/services or indicate their source.
Trademark protects only words, symbols, and devices that identify the source of a work; the content of the work is protected under copyright law. EMI Catalogue P’ship v. Hill, 228 F.3d 56, 63 (2d. Cir. 2000).
Advertising agencies cannot obtain trademarks for slogans sold to end users because these works identify the end-user’s product, rather than the agency’s services. In re Admark, Inc., 214 U.S.P.Q. 302, 303.
The analogous use doctrine states that a party may be entitled to trademark protection if his uses were similar to trademark, even if he cannot meet the technical requirements. Diarama Trading Co. v. J. Walter Thompson U.S.A. However, the analogous use must be “open and notorious.†Housing Services, Inc. v. Minton.
Holding: The court concludes that Goetz does not have a valid trademark or service mark claim for “My card, my life†because the slogan does not identify any of Goetz’s services. He merely used the slogan as part of his advertising materials and never displayed it to the public. In this respect, Goetz’s use is like that of an advertising agency that sells a slogan to an end-user. Similarly, the court determines Goetz’s analogous use claim fails because he did not use the slogan in an “open and notorious†manner. He kept such a low profile for the project that it never became publicly associated with him or his business. Therefore, the Second Circuit affirmed the district court’s holding in American Express's favor.