A Story About Coincidence
Many times, I find cases more interesting for the stories they tell than the thorny legal issues they may (or may not) present. American Express Co. v. Goetz out of the Second Circuit is one of those cases and it tells a story of remarkable coincidence.
In the summer of 2004, the defendant, Stephen Goetz developed the idea of allowing credit card customers to personalize their cards by choosing a photo to be printed on the card. As part of his pitch for this idea, Goetz used the slogan "My Life, My Card" because he thought the phrase "would perfectly embody what card consumers sought." On July 30, 2004, Goetz mailed a proposal to American Express that included the slogan. He also created an Internet-based demonstration of his concept which prominently displayed the slogan. And on September 7, 2004, he registered the domain name www.mylife-mycard.com and filed a trademark registration application for the slogan with the PTO the next day.
As it happens, also in the summer of 2004, American Express hired an advertising agency to develop a new global campaign for its products. On July 22, 2004, the agency proposed a campaign to American Express featuring the MY LIFE. MY CARD. slogan. After American Express expressed interest in the campaign, the agency's outside counsel conducted a preliminary trademark search for the availability of the slogan as a service mark on July 29, followed by a full trademark search on July 31, which was two days before the scheduled delivery date of Goetz's proposal to American Express. American Express decided to proceed with the MY LIFE. MY CARD. campaign and therefore registered the domain name www.mylifemycard.com on September 1, 2004, and filed an ITU application with the PTO on September 15.
As I said, remarkable coincidence.
As for the legal issue--this is after all a legal blog--American Express won on summary judgment and Goetz's counterclaims were dismissed because both the District Court and the Second Circuit concluded that he did not use the slogan as a trademark.
