The U.S. Court of Appeals for the Second Circuit affirmed the district court's grant of summary judgment in favor of the plaintiff and dismissal of the trademark infringement and misappropriation counterclaims asserted by defendant. American Express Co. v. Stephen G. Goetz and Gardner Design Group, LLC, Case No. 06-2184 (2nd Cir., Feb. 4, 2008) (per curiam).
Goetz, while working at a design company, formulated an idea to enable credit card customers to personalize a card by choosing a photograph to be printed on the card's face. In proposing this idea to potential clients, Goetz prominently displayed the slogan "MY LIFE, MY CARD." In July of 2004, Goetz sent this proposal to American Express, as well as to other credit card companies. In September of 2004, he registered the domain name www.mylife-mycard.com, created an internet-based demonstration of his card personalization concept and filed a trademark application with the U.S. Patent and Trademark Office (USPTO) for the "MY LIFE, MY CARD" mark. Around this very time, American Express hired an advertising agency that proposed the "MY LIFE. MY CARD" idea as the linchpin of a new campaign. In August of 2004, American Express registered a similar domain name and filed an intent-to-use application with the USPTO. Goetz demanded that the company cease and desist using the slogan, claiming that he created the slogan. American Express responded by initiating an action in district court for declaratory judgment that it had not misappropriated the slogan and that defendant Goetz lacked a viable infringement claim.
In granting American Express' motion for summary judgment, the district court held that Goetz had no valid protectible senior trademark rights in the expression "My Life, My Card" noting that Goetz did not contest American Express' claim that it independently conceived of the slogan. Goetz appealed.
In affirming, the Second Circuit held that Goetz never used the slogan as a trademark and emphasized the difference between copyright rights (which protect an expression, such as a musical composition itself) and trademark rights (which protect, for instance the title of the composition so as to identify the song in the marketplace). The court noted that a mark or slogan that performs a source-identifying function in one set of hands may constitute the creative work itself in another. This would be true, for instance, in the case of Goetz or an advertising agencythe slogan is the agency's creative work but may become a source identifier when used by the client. As discussed by the court, the Trademark Trial and Appeal Board has long recognized that slogans cannot be registered by marks by an advertising agency, even if they would be subject to registration by the end user. The Second Circuit also rejected Goetz's analogous use argument, i.e., that his use was analogous to trademark use, holding that to qualify for analogous use rights, the use must be open and notorious and of such a nature and extent that the mark becomes popularized in the public mind so as to identify the marked goods with the mark's adopter. The court rejected this argument in view of Goetz's complete failure to actually use the mark in commerce.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
