July 2, 2004: Stephen Goetz’s alleged date of first use of MY LIFE, MY CARD for computer software for financial credit/debit card content management.
September 1, 2004: American Express registers mylifemycard.com as domain name.
September 8, 2004: Goetz files use-based trademark application for MY LIFE, MY CARD.
September 15, 2004: American Express files ITU trademark application for MY LIFE. MY CARD for range of credit and travel card services.
November 2004: American Express launches MY LIFE. MY CARD advertising campaign.
The NY Times reports today that Goetz has sued Amex. The article contains this quote:
Yet even if Mr. Goetz came up with “My life. My card.” the tagline may be too general for him to make a strong ownership claim.
“Unless you have an association beyond its words, you don’t have anything,” said Thomas F. Holt Jr., a lawyer at Kirkpatrick & Lockhart who is not involved in the case. “It’s not until American Express brings its magic to the naming process does that mark have any vitality.”
Given that the Lanham Act was written by Muggles, magic is not a required element for protection.
As to ‘association,’ the speaker was likely using ‘association’ to mean either trademark strength or secondary meaning. A descriptive term will acquire protection only after it has obtained secondary meaning – that is, an association between the term and the source of the goods (AMERICAN AIRLINES for example).
On that point, neither Goetz’ nor Amex’ applications for the term received descriptiveness objections, so the term MY CARD, MY LIFE may well be inherently registrable (and proof of secondary meaning will not be required). If Goetz proves priority, Amex has issues.
As to strength of the senior user’s mark, or lack thereof, a senior ‘small’ trademark owner has challenges with regard to proving damages when protesting use by a junior ‘large’ trademark owner, where the reputation of the mark has been created by the junior user’s efforts. Whether the junior user adopted the mark with knowledge of the small senior user or not, it likely didn’t take the mark with an intent to willfully infringe the senior user’s reputation, because there is none.
That said, reverse confusion is potentially a potent argument, and some of the largest (trial) damages ever awarded arose under this theory (such as the THIRST-AID and BIG FOOT cases). A rationale for the theory is that the senior user is damaged because it will be perceived as a copy-cat.
Judge Posner has challenged this rationale in Peaceable Planet v. Ty, however he leaves in place other plausible rationales for a finding of reverse confusion. A small senior user may well be damaged by a large junior user – if damaged, it should be made whole. Whether it should be a big payday is another matter.