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Keywords

motionsummary judgmenttrademarkdeclaratory judgment

trademark

Related Cases

American Express Co. v. Goetz, 515 F.3d 156, 85 U.S.P.Q.2d 1913

Facts

Stephen Goetz, president of Gardner Design Group, LLC, developed a slogan 'My Life, My Card' to market a concept of personalized credit cards. He sent proposals to various credit card companies, including American Express, but did not actually use the slogan in a manner that identified his services. American Express later launched a campaign using a similar slogan, prompting Goetz to demand they cease use. American Express filed a declaratory judgment action, leading to a summary judgment in favor of American Express.

Goetz's idea was to personalize credit cards by reproducing photographs selected by cardholders on the face of their cards. In search of clients, Goetz sent proposals to various credit card companies, including American Express, containing a description of his concept and the catchphrase My Life, My Card.

Issue

Whether Goetz had any protectable trademark rights in the slogan 'My Life, My Card' against American Express's use of a similar slogan.

Rule

Under the Lanham Act, a trademark or service mark must identify and distinguish goods or services and indicate their source. A mark that does not perform this role is not entitled to protection. Actual use in the marketplace is required for trademark rights, and analogous use must be open and notorious to establish rights.

Analysis

The court found that Goetz's use of the slogan was not actual use as he did not sell credit cards or provide services associated with the slogan. His promotional materials were directed at credit card companies, not consumers, and thus did not establish trademark rights. Furthermore, his use was not open and notorious, as it was limited to a few communications within the industry without public exposure.

In sum, Goetz employed the slogan My Life, My Card to generate interest among potential licensee credit card companies and not to differentiate or identify the origin of his goods or services. In such circumstances, the slogan served as 'a mere advertisement for itself as a hypothetical commodity.' Silberstein v. Fox Entm't Group, Inc., 424 F.Supp.2d 616, 633 (S.D.N.Y.2004).

Conclusion

The court affirmed the summary judgment in favor of American Express, concluding that Goetz had no valid trademark rights in 'My Life, My Card.'

The court held that Goetz had 'no valid protectable trademark rights in My Life, My Card or any other purported mark using those words that are senior to [American Express's] rights in MY LIFE. MY CARD.'

Who won?

American Express prevailed in this case because the court determined that Goetz did not have any protectable trademark rights in the slogan 'My Life, My Card.' The court emphasized that Goetz's use of the slogan was merely promotional and did not constitute actual use in the marketplace, which is a prerequisite for trademark protection. Additionally, the court noted that Goetz's use was not open and notorious, further undermining his claim.

American Express prevailed in this case because the court determined that Goetz did not have any protectable trademark rights in the slogan 'My Life, My Card.'

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