* Ordinary words can be trademarked
* Camel cupcakes, Tide calculators might be improper too
By Jonathan Stempel
NEW YORK, June 28 (Reuters) - Visa may be everywhere you want to be, but not if you stick an “e” in front of it.
A federal appeals court on Monday ruled a man cannot use the “eVisa” name for an Internet business because it diluted the trademark of Visa Inc (V.N), the world’s largest credit card network.
In the nine-year-old lawsuit, Visa had objected to the use of the name by Joseph Orr, who started running eVisa out of his apartment in Brooklyn, New York.
Orr said the name derived from “Eikaiwa Visa,” an English-language tutoring service he had operated in Japan. Eikaiwa is Japanese for English conversation, and eVisa was intended to suggest an ability to travel in the English-speaking world.
In his opinion for a three-judge panel of the U.S. Ninth Circuit Court of Appeals in San Francisco, Chief Judge Alex Kozinski said Visa enjoys a “strong trademark” not weakened by the common use of the word “visa” in ordinary conversation.
But Kozinski said that by using “eVisa” to describe a “multilingual education and information business,” and posting an eVisa mark on his website next to a booklet resembling a passport, Orr improperly blurred the meaning of “visa.”
“There are, for instance, many camels, but just one Camel; many tides, but just one Tide,” Kozinski wrote, referring respectively to the cigarette and laundry detergent brands.
“Camel cupcakes and Tide calculators would dilute the value of those marks,” he went on. “Likewise, despite widespread use of the word visa for its common English meaning, the introduction of the eVisa mark to the marketplace means that there are now two products, and not just one, competing for association with that word. This is the quintessential harm addressed by anti-dilution law.”
Bradley Booke, a lawyer representing Orr, did not immediately return a call seeking comment. A spokesman for San Francisco-based Visa had no immediate comment.
Visa filed its original lawsuit in federal court in Las Vegas, where Orr’s company JSL Corp was incorporated. The Ninth Circuit hears appeals from that court.
The case is Visa International Service Association v. JSL Corp, U.S. Ninth Circuit Court of Appeals, No. 08-15206. (Reporting by Jonathan Stempel; Editing by Bernard Orr)