USCA Second Circuit, February 4, 2008
In a declaratory relief action filed by American Express, the U.S. Court of Appeals for the Second Circuit affirmed a lower court’s ruling that American Express did not violate the rights of defendant Stephen Goetz, who mailed a proposal to the company on July 30, 2004, with the slogan “’My Life, My Card’ American Express delivers personalized cards to its cardholders!” by using the slogan “MY LIFE. MY CARD.”
Goetz, on behalf of his design company, pitched the idea of allowing credit card customers to personalize their credit cards by choosing a photograph to be printed on the card’s face. The proposals, which were sent to several credit card companies, including American Express, all incorporated the slogan “My Life, My Card.”
Goetz did not dispute that the Ogilvy Group, hired by American Express, had independently developed a global marketing campaign for American Express, centered around the slogan “My Life. My Card” as of July 22, 2004. Moreover, Ogilvy Group’s counsel conducted a trademark search at the end of July 2004 – prior to the scheduled delivery of Goetz’s proposal – and found no references to Goetz. Goetz filed an Intent to Use application for “My Life, My Card” on September 8, 2004, whereas American Express filed an Intent to Use application for “MY LIFE. MY CARD” on September 15, 2004.
Following the launch of American Express’s global marketing campaign, Goetz sent cease and desist letters to American Express claiming that he had superior rights in the slogan. In response, American Express filed an action for declaratory judgment and Goetz filed counterclaims. The district court granted summary judgment in favor of American Express.
In upholding the lower court’s decision that Goetz never made actual use of the slogan, the Second Circuit equated Goetz’s use of the slogan to that of an advertising agency which licenses a marketing slogan to its clients. The court cited The Patent and Trademark Office’s Trademark Trial and Appeal Board’s long standing recognition that “slogans cannot be registered as marks by the advertising agency, even if they would be subject to registration by the end user.”
The court reasoned that trademark law, unlike copyright law (which protects the content of a creative work) protects only the symbols, elements or devices which identify the work in the marketplace and prevents confusion as to its source. The court determined that Goetz’s use of the slogan was part of his business proposal to the credit card companies rather than a mark designating the origin of any goods or services offered to them and stated that “his claim is no better than that of an advertising agency that offers its clients a marketing concept to enhance their sales.” Based on this finding, the court found Goetz’s trademark claim was properly dismissed.
The court also rejected 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. Finding Goetz’s use did not qualify as “analogous use,” the court noted that analogous use must be open and notorious and Goetz only used the slogan in the materials he sent to the credit card companies. In fact, Goetz had stated that he “wanted to keep a low profile for the project.” Thus, there was no public exposure of the mark. The court also made clear that even the analogous use doctrine does not obviate the requirement that Goetz show eventual actual use, which he had not shown.