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Second Circuit: Sales pitch of slogan to credit card companies not use in commerce
February 08, 2008

In a decision Monday, the Second Circuit affirmed a district court's summary judgment in a trademark case involving the slogan "My Life. My Card." An individual threatened to sue American Express for use of the slogan, alleging that he had superior rights in the mark based on efforts to license the phrase to various credit card companies, including American Express. American Express filed a declaratory judgment action, and the district court granted summary judgment to American Express, holding that seeking to license the mark to companies did not constitute a use in commerce, and as such the individual had not gained any trademark rights in the phrase.

The Second Circuit affirmed, agreeing that because the individual had not used the mark in commerce, American Express legally held the trademark rights to the "My Life. My Card." slogan. As summarized by the court: "there can be no trademark absent goods sold and no service mark without services rendered."

More detail of Am. Express Co. v. Goetz after the jump.

American Express began using the slogan "My Life. My Card." in connection with an advertising campaign featuring celebrity cardholders like Ellen DeGeneres and Tiger Woods in November 2004. Back in the summer of 2004, Stephen Goetz, who was then working for a company called Mez Design, pitched an idea to American Express, MasterCard and other credit card companies for an idea which would enable credit card customers to personalize a card by choosing a picture to be printed on the card's face. In proposing this idea to potential clients, Goetz prominently displayed the slogan "My Life, My Card." At about the same time, American Express hired an advertising agency to help in the development of a new global advertising campaign. Goetz never contested that American Express's advertising agency independently conceived of the "My Life. My Card." slogan. American Express' outside counsel conducted both a preliminary and full trademark search for the expression on July 29 and July 31 respectively—two days prior to ever even receiving Goetz' sale pitch for the personalized credit cards. Starting in early November 2004, American Express used the "My Life. My Card." slogan as it launched a global campaign of television, print, outdoor and Internet advertising. Shortly thereafter Goetz demanded that the company cease and desist its use of the slogan and American Express responded by filing a declaratory judgment action asking for a judgment that it had not misappropriated the slogan and that Goetz could not make a claim for infringement. In a February 2006 summary judgment ruling, the district court ruled in favor of American Express, dismissing Goetz's counterclaims for misappropriation and trademark infringement. The Second Circuit affirmed, finding that the district court properly granted summary judgment in the case, principally because Goetz never made "actual trademark use" of the "My Life, My Card" concept. In rendering its decision the court emphasized the difference between copyright protection and trademark protection, noting that while copyright laws protect the content of a creative work (e.g., the musical composition), trademark laws are designed to protect the words and designs which identify the source of work (e.g., the title of a song). Here, the court found that for Goetz, the slogan was part of his creative work (his business proposal to credit card companies), not a source identifier. The Court noted that the USPTO has long recognized that slogans cannot be registered as marks by the advertising agencies, even if they would be subject to registration by the end users. "In sum," the court said, "Goetz employed the slogan 'My Life, My Card' to generate interest among potential licensee credit card companies and not to differentiate the origin of his goods or services. In such circumstances, slogan served as a 'mere advertisement for itself as a hypothetical commodity.'" The court added "there can be no trademark absent goods sold and no service mark without services rendered."

To read the full decision in Am. Express Co. v. Goetz, click here.

Vegas Trademark Attorney blogs about the case here, and Likelihood of Confusion provides this post.

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