## Facts

- Visa International Service Association owned the famous and distinctive VISA trademark used for credit-card and financial services.
- JSL Corp., through Joseph Orr, operated an internet-based multilingual education and information business using the mark “eVisa” and the domain name evisa.com.
- Orr previously ran an English tutoring business in Japan called “Eikaiwa Visa” and said “eVisa” referenced travel and language rather than Visa’s credit-card brand.
- Visa sued in the District of Nevada for federal trademark dilution (not traditional likelihood-of-confusion infringement), alleging dilution by blurring under 15 U.S.C. § 1125(c).
- The district court granted summary judgment to Visa and entered injunctive relief against JSL’s use of “eVisa” and evisa.com for its business.
- On appeal, JSL challenged only whether its “eVisa” use was likely to dilute Visa’s mark; JSL did not dispute Visa’s fame and distinctiveness or that JSL’s use began after VISA became famous.

## Issues

1. Whether JSL’s use of “eVisa” and evisa.com was likely to dilute the famous VISA mark by blurring under 15 U.S.C. § 1125(c).
2. How similarity is evaluated when a junior mark largely incorporates a famous mark with only a minimal prefix.
3. Whether dilution protection is reduced because the famous mark is also a common English word.

## Decision

- The Ninth Circuit affirmed the summary judgment for Visa.
- The court held that “eVisa” was likely to dilute the VISA mark by blurring.
- The court treated the marks as effectively identical, concluding that adding a lower-case “e” did not meaningfully distinguish “eVisa” from “Visa.”
- The court rejected JSL’s argument that “visa” being a common English word avoided dilution liability where the word was used as a brand rather than merely for its ordinary dictionary meaning.
- The court concluded that Visa’s and JSL’s services competed for consumer association with the word “Visa,” impairing VISA’s distinctiveness.

## Legal Principles

- To obtain relief for federal dilution by blurring, a plaintiff must show (1) the mark is famous and distinctive, (2) the defendant began use after the mark became famous, and (3) the defendant’s use is likely to cause dilution by blurring.  
- Dilution by blurring is an association arising from similarity that impairs the distinctiveness of a famous mark, even when the parties’ goods or services are unrelated and confusion is not required.
- Similarity is a primary consideration in blurring analysis; adding a minimal prefix (such as “e-”) may leave a junior mark effectively identical to the famous mark.
- A famous mark that is also a common English word can still be protected against dilution when the junior user employs the word as a trademark in a non-descriptive manner that impairs the famous mark’s unique association.
- Lack of intent to dilute does not defeat liability where the objective effect of the junior use is likely blurring.

## Conclusion

The Ninth Circuit held that JSL’s “eVisa” mark and evisa.com were likely to blur the unique consumer association with VISA, and it affirmed summary judgment and injunctive relief because the marks were effectively identical and the junior use impaired the distinctiveness of Visa’s famous mark even though “visa” is a common English word.


Visa Int'l Serv. Ass'n v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010)