True Trademark Use Required To Support Trademark Rights - Use In by fkm75091


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True Trademark Use Required To Support Trademark Rights – Use In Advertising
Proposals Not Enough

In American Express Co. v. Goetz and Gardner Design Group, LLC, 515 F.3d 156, 85 U.S.P.Q.2d 1913
(2d Cir. 2008), the Second Circuit, in a per curiam opinion, affirmed a decision of the district court for
the Southern District of New York, granting American Express’s motion for summary judgment on the
issue of American Express’s alleged trademark misappropriation. The Second Circuit held that
defendant Goetz had not made sufficient trademark use of the slogan “My Life, My Card” to support a
claim for trademark infringement against American Express.

On July 30, 2004, defendant Goetz, then working for a company called Mez Design, mailed a business
proposal to American Express and several other credit card companies promoting a personalized credit
card concept. The slogan Goetz created to go along with the proposed campaign was “My Life, My
Card.” The proposal was mailed on Mez Design letterhead and emphasized the services that Mez
Design could provide to the recipient of the proposal, in this case American Express. The slogan “My
Life, My Card” was always followed by the name of the credit card company, never appeared as a
stand-alone logo, and was never followed by a reference to Goetz or Mez Design. On September 7,
2004 Goetz registered the domain name, and the following day he filed an
application with the U.S. Patent and Trademark Office to register the slogan as a trademark.

Eight days before receiving Goetz’s proposal, however, on July 22, 2004, Ogilvy Group advertising
agency had made an advertising campaign proposal to American Express using the slogan MY LIFE.
MY CARD. as the basis of its proposal. On July 29 and 31, 2004, Ogilvy’s outside counsel conducted
preliminary and full trademark searches for the mark, and neither of the searches uncovered Goetz’s
alleged slogan.      On September 1, 2004, American Express registered the domain name and shortly thereafter filed an Intent-to-Use trademark application with the U.S.
Patent and Trademark Office. In November, 2004 American Express launched its global campaign
using the slogan MY LIFE. MY CARD.

Upon learning of American Express’s use of the MY LIFE. MY CARD. slogan, Goetz demanded cease
using the slogan, alleging that he had acquired trademark rights in the slogan, and that American
Express’s use was likely to cause confusion. American Express responded by filing a declaratory
judgment complaint seeking a declaration from the court that its actions did not infringe any protectable
rights of Goetz. After discovery, American Express moved for summary judgment on the basis that
there were no genuine issues of material fact that would permit a decision in Goetz’s favor.

The Court of Appeals reviewed the manner in which Goetz had “used” the slogan and agreed with the
                                                                              VOLUME 2 | ISSUE 2

District Court that Goetz had “no valid protectable trademark rights in My Life, My Card or any other
purported trademark using those words that [were] senior to [American Express’s] rights in MY LIFE.
MY CARD.” Analyzing Goetz’s “use”, the court began by noting that “there can be no trademark absent
goods sold, and no service mark without services offered.” In this regard, the court acknowledged that
the manner in which service marks are used may differ from the manner in which trademarks are used,
but nonetheless recognized that a service mark cannot be said to have truly been 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.” Goetz’s use was not actual use because his “services were wholly hypothetical
when he sent his promotional materials to the credit card companies.”

While it is certainly possible for a slogan to act as a trademark or service mark, such rights inure to the
benefit of the company that actually uses the mark. The Court explained that the Patent and
Trademark Office’s Trademark Trial and Appeal Board has long recognized that slogans created by
advertising agencies cannot be registered as marks by the agency because “the slogan does not
identify and distinguish the services of the advertising agency, but rather is the creative work itself.”
Here, the Second Circuit concluded that based on the proposal letter sent from Goetz on behalf of Mez
Design, the slogan “My Life, My Card” was merely a “component of Goetz’s business proposal to the
credit card companies rather than a mark designating the origin of any goods or services he offered to
them.” Indeed, because Goetz did not sell credit cards, he never displayed the slogan to card
consumers. “Instead, he offered the slogan as a complement to the card personalization concept and
software he proposed to sell and, in this respect, his claim is no better than that of an advertising
agency that offers its clients a marketing concept to enhance their sales.”

Goetz attempted to save his case by arguing that his “use” was sufficient to entitle him to trademark
rights under the doctrine of “analogous use”, which provides that activities that are analogous to
trademark use are sufficient to establish trademark rights in the absence of actual use. The Second
Circuit was not persuaded. The Court held that Goetz’s use did not qualify as analogous use because,
at the very least, analogous use must be open and notorious, i.e., “analogous use must be ‘of such a
nature and extent that the mark has become ‘popularized in the public mind’ so that the relevant
segment of the public identifies the marked goods with the mark’s adopter.” Here, because Goetz used
the slogan in proposals to only a few credit card companies and because there was no public exposure
of the “My Life, My Card” slogan, he had no basis to claim that the public identified the slogan with him.
As such, Goetz had no trademark rights in the slogan, and could therefore not establish a material
element on which he would bear the burden at trial. Accordingly, summary judgment in American
Express’s favor was appropriate.

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