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Visa International Wins Trademark Dilution Suit On Partial Summary Judgment Against EVISA Owner.

RENO, December 16, 2008 -- After the case was appealed and remanded twice before, Visa International won its trademark dilution claim on partial summary judgment for JSL Corporation's use of the mark EVISA.

A ruling on summary judgment is unusual in trademark lawsuits because they are so factually oriented that rulings on summary judgment are disfavored.

JSL Corporation was using the mark EVISA in connection with travel, foreign language, and other multilingual services. JSL Corporation filed an application to federally register the mark EVISA in addition to using the domain name www.evisa.com. Visa International responded by filing suit, citing trademark dilution in addition to trademark infringement and cybersquatting.

Trademark dilution is a cause of action whereby the owner of a famous mark may seek injunctive relief and monetary compensation from another who is using a similar mark that lessens the famous mark's uniqueness or diminishes the goodwill therein.

In its third ruling on partial summary judgment, the district court held that the mark VISA was famous and distinctive under the Trademark Dilution Revision Act ("TDRA"). The court also ruled that the VISA mark was arbitrary in relationship to the services offered by Visa International. District Court Judge Larry Hicks also ruled that JSL Corporation's mark EVISA was almost identical to Visa International's registered trademark, except for the addition of the letter 'e' which is commonly used as a prefix to denote the online counterpart of a business.

JSL Corporation has been enjoined from using the mark EVISA and from further attempts at registering the mark. The issue of damages for trademark dilution is still before the court.

This case has undergone a long procedural history. The court initially granted partial summary judgment in Visa International's favor in 2001 by ruling that JSL Corporation's use of the mark EVISA likely damaged the uniqueness of the famous mark VISA as a matter of law. JSL Corporation appealed the summary judgment to the Ninth Circuit in the wake of the U.S. Supreme Court's decision in Moseley v. V Secret Catalogue, Inc., in which the Court ruled that a plaintiff must prove actual dilution and not merely a likelihood of dilution.

The Ninth Circuit remanded the decision back to the District Court, which again applied the Federal Trademark Dilution Act ("FTDA") and granted summary judgment to Visa International again. In the meantime, the TDRA was signed into law, which changed the standard in dilution cases from actual dilution to a likelihood of dilution. JSL Corporation appealed the district court's decision again on the basis that the court applied the FTDA instead of the TDRA.

Complicating the mater, the Ninth Circuit amended the decision in Jada Toys, Inc. v. Mattel, Inc. on February 21, 2008 to apply the TDRA to a trademark dilution claim even though the plaintiff filed suit before the TDRA's enactment. In light of the Jada amendment, the district court informed the Ninth Circuit that it wished to entertain the appealant's motion for relief from a final judgment which resulted in the Ninth Circuit remanding the case to allow Judge Hicks an opportunity to reconsider his ruling.