FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

VISA INTERNATIONAL SERVICE 

No. 08-15206 ASSOCIATION,

Plaintiff-Appellee, D.C. No.  CV-01-00294-

v. LRH/LRL

JSL CORPORATION,

OPINION Defendant-Appellant. 

Appeal from the United States District Court

for the District of Nevada

Larry R. Hicks, District Judge, Presiding

Argued and Submitted

January 14, 2010—San Francisco, California

Filed June 28, 2010

Before: Alex Kozinski, Chief Judge, J. Clifford Wallace and

Richard R. Clifton, Circuit Judges.

Opinion by Chief Judge Kozinski

9347
COUNSEL

Bradley L. Booke, Moriarity, Badaruddin & Booke, Las

Vegas, Nevada, for the defendant-appellant. 

Michael J. McCue, Lewis and Roca LLP, Las Vegas, Nevada,

for the plaintiff-appellee. 

OPINION

KOZINSKI, Chief Judge:

She sells sea shells by the sea shore. That’s swell, but how

about Shell espresso, Tide motor oil, Apple bicycles and Playboy computers? We consider the application of anti-dilution

law to trademarks that are also common English words.

Facts

Joseph Orr runs eVisa, a “multilingual education and information business that exists and operates exclusively on the

Internet,” at www.evisa.com. At least he did, until the district

court enjoined him. Orr traces the name eVisa back to an

English language tutoring service called “Eikaiwa Visa” that

he ran while living in Japan. “Eikaiwa” is Japanese for

English conversation, and the “e” in eVisa is short for

9350 VISA INTERNATIONAL v. JSL CORP.
Eikaiwa. The use of the word “visa” in both eVisa and

Eikaiwa Visa is meant to suggest “the ability to travel, both

linguistically and physically, through the English-speaking

world.” Orr founded eVisa shortly before his return to America, where he started running it out of his apartment in Brooklyn, New York. 

Visa International Service Association sued JSL Corporation, through which Orr operates eVisa, claiming that eVisa

is likely to dilute the Visa trademark. The district court

granted summary judgment for Visa, and JSL appeals.

Analysis

[1] A plaintiff seeking relief under federal anti-dilution law

must show that its mark is famous and distinctive, that defendant began using its mark in commerce after plaintiff’s mark

became famous and distinctive, and that defendant’s mark is

likely to dilute plaintiff’s mark. See Jada Toys, Inc. v. Mattel,

Inc., 518 F.3d 628, 634 (9th Cir. 2008). JSL does not dispute

that the Visa mark is famous and distinctive or that JSL began

using the eVisa mark in commerce after Visa achieved its

renown. JSL claims only that the district court erred when it

found as a matter of law that eVisa was likely to dilute the

Visa trademark. 

[2] There are two types of dilution, but here we are concerned only with dilution by blurring, which occurs when a

mark previously associated with one product also becomes

associated with a second. See 15 U.S.C. § 1125(c)(2)(B);

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903-04 (9th

Cir. 2002). This weakens the mark’s ability to evoke the first

product in the minds of consumers. “For example, Tylenol

snowboards, Netscape sex shops and Harry Potter dry cleaners would all weaken the ‘commercial magnetism’ of these

marks and diminish their ability to evoke their original associations.” Mattel, 296 F.3d at 903. Dilution isn’t confusion;

quite the contrary. Dilution occurs when consumers form new

VISA INTERNATIONAL v. JSL CORP. 9351
and different associations with the plaintiff’s mark. “Even if

no one suspects that the maker of analgesics has entered into

the snowboard business, the Tylenol mark will now bring to

mind two products, not one.” Id.

Whether a defendant’s mark creates a likelihood of dilution

is a factual question generally not appropriate for decision on

summary judgment. See Jada Toys, Inc., 518 F.3d at 632.

Nevertheless, summary judgment may be granted in a dilution

case, as in any other, if no reasonable fact-finder could fail to

find a likelihood of dilution. Congress has enumerated factors

courts may use to analyze the likelihood of dilution, including

the similarity between the two marks and the distinctiveness

and recognition of the plaintiff’s mark. 15 U.S.C.

§ 1125(c)(2)(B)(i), (ii), (iv); see also PerfumeBay.com, Inc. v.

eBay, Inc., 506 F.3d 1165, 1181 n.9 (9th Cir. 2007). And, in

an appropriate case, the district court may conclusively determine one or more of these factors before trial. 

[3] The marks here are effectively identical; the only difference is the prefix “e,” which is commonly used to refer to

the electronic or online version of a brand. That prefix does

no more to distinguish the two marks than would the words

“Corp.” or “Inc.” tacked onto the end. See Horphag Research

Ltd. v. Garcia, 475 F.3d 1029, 1036 (9th Cir. 2007) (use of

identical mark provides “circumstantial evidence” of dilution). 

[4] And Visa is a strong trademark. “In general, the more

unique or arbitrary a mark, the more protection a court will

afford it.” Nutri/System, Inc. v. Con-Stan Indus., Inc., 809

F.2d 601, 605 (9th Cir. 1987). The Visa mark draws on positive mental associations with travel visas, which make potentially difficult transactions relatively simple and facilitate new

opportunities and experiences. Those are good attributes for

a credit card. But those associations are sufficiently remote

that the word visa wouldn’t make people think of credit cards

if it weren’t for the Visa brand. “This suggests that any asso9352 VISA INTERNATIONAL v. JSL CORP.
ciation is the result of goodwill and deserves broad protection

from potential infringers.” Dreamwerks Prod. Grp., Inc. v.

SKG Studio, 142 F.3d 1127, 1130 n.7 (9th Cir. 1998). Visa

also introduced uncontroverted evidence that Visa is the

world’s top brand in financial services and is used for online

purchases almost as often as all other credit cards combined.

This was enough to support the district court’s summary judgment. 

[5] JSL vigorously contests the validity of market surveys

and expert testimony introduced by Visa to show that eVisa

dilutes the Visa mark, and it claims that evidence should have

been excluded under Daubert v. Merrell Dow Pharm., Inc.,

509 U.S. 579 (1993). But a plaintiff seeking to establish a

likelihood of dilution is not required to go to the expense of

producing expert testimony or market surveys; it may rely

entirely on the characteristics of the marks at issue. See 15

U.S.C. § 1125(c)(2)(B) (listing relevant factors). Expert testimony and survey evidence may be necessary in marginal

cases, or where a defendant introduces significant evidence to

show that dilution is unlikely. But JSL presented nothing,

other than Orr’s statement that he did not intend to dilute the

Visa mark, to rebut the inference of likely dilution created by

the strength and similarity of the marks. Good intentions

alone do not negate a showing of a likelihood of dilution. We

therefore need not reach the admissibility of Visa’s expert testimony and market survey evidence. 

[6] JSL claims the eVisa mark cannot cause dilution

because, in addition to being an electronic payment network

that’s everywhere you want to be, a visa is a travel document

authorizing the bearer to enter a country’s territory. When a

trademark is also a word with a dictionary definition, it may

be difficult to show that the trademark holder’s use of the

word is sufficiently distinctive to deserve anti-dilution protection because such a word is likely to be descriptive or suggestive of an essential attribute of the trademarked good.

Moreover, such a word may already be in use as a mark by

VISA INTERNATIONAL v. JSL CORP. 9353
third parties. For example, we rejected a dilution claim by

Trek Bicycle Corporation for its “Trek” mark in part because

it played heavily off the dictionary meaning of “trek,” suggesting that the bicycles were designed for long or arduous

journeys. Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d

894, 912 n.14 (9th Cir. 2002). Additionally, the creators of the

Star Trek series had already “incorporated this common

English language word into their trademark,” and the “glow

of this celebrity ma[de] it difficult for Trek to obtain fame

using the same word.” Id. In our case, Visa’s use of the word

visa is sufficiently distinctive because it plays only weakly off

the dictionary meaning of the term and JSL presented no evidence that a third party has used the word as a mark.

[7] It’s true that the word visa is used countless times

every day for its common English definition, but the prevalence of such non-trademark use does not undermine the

uniqueness of Visa as a trademark. See 2 McCarthy on Trademarks and Unfair Competition § 11:87 (4th ed. 2010). “The

significant factor is not whether the word itself is common,

but whether the way the word is used in a particular context

is unique enough to warrant trademark protection.” Wynn Oil

Co. v. Thomas, 839 F.2d 1183, 1190 n.4 (6th Cir. 1988). In

the context of anti-dilution law, the “particular context” that

matters is use of the word in commerce to identify a good or

service. There are, for instance, many camels, but just one

Camel; many tides, but just one Tide. Camel cupcakes and

Tide calculators would dilute the value of those marks. 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. 

JSL is not using the word visa for its literal dictionary definition, and this would be a different case if it were. Visa does

not claim that it could enforce its Visa trademark to prevent

JSL from opening “Orr’s Visa Services,” any more than

9354 VISA INTERNATIONAL v. JSL CORP.
Apple could shut down Orr’s Apple Orchard or Camel could

fold up Orr’s Camel Breeders. Visa doesn’t own the word

“visa” and may not “deplete the stock of useful words” by

asserting otherwise. New Kids on the Block v. News America

Publ’g, Inc., 971 F.2d 302, 306 (9th Cir. 1992); cf. Kellogg

Co. v. Nat’l Biscuit Co., 305 U.S. 111, 116-17 (1938). Conferring anti-dilution rights to common English words would

otherwise be untenable, as whole swaths of the dictionary

could be taken out of circulation. Nor would a suit against

Orr’s Visa Services advance the purpose of anti-dilution law.

Such use of the word would not create a new association for

the word with a product; it would merely evoke the word’s

existing dictionary meaning, as to which no one may claim

exclusivity. 

[8] JSL argues that its use of the word “visa” is akin to

Orr’s Visa Services because the eVisa mark is meant to “connote the ability to travel, both linguistically and physically,

through the English-speaking world” and therefore employs

the word’s common English meaning. JSL’s site depicted the

eVisa mark next to a booklet that looks like a passport, and

it divided the services offered into the categories “Travel

Passport,” “Language Passport” and “Technology Passport.”

But these allusions to the dictionary definition of the word

visa do not change the fact that JSL has created a novel meaning for the word: to identify a “multilingual education and

information business.” This multiplication of meanings is the

essence of dilution by blurring. Use of the word “visa” to

refer to travel visas is permissible because it doesn’t have this

effect; the word elicits only the standard dictionary definition.

Use of the word visa in a trademark to refer to a good or service other than a travel visa, as in this case, undoubtedly does

have this effect; the word becomes associated with two products, rather than one. This is true even when use of the word

also gestures at the word’s dictionary definition. 

[9] JSL’s allusions to international travel are more obvious

and heavy-handed than Visa’s, and JSL claims that its use of

VISA INTERNATIONAL v. JSL CORP. 9355
the word is therefore “different” from Visa’s. That’s true;

Visa plays only weakly off the word’s association with international travel, whereas JSL embraced the metaphor with

gusto. But dilution always involves use of a mark by a defendant that is “different” from the plaintiff’s use; the injury

addressed by anti-dilution law in fact occurs when marks are

placed in new and different contexts, thereby weakening the

mark’s ability to bring to mind the plaintiff’s goods or services. See Mattel, 296 F.3d at 903. The only context that matters is that the marks are both used in commerce as

trademarks to identify a good or service, as they undoubtedly

are in this case. 

The district court was quite right in granting summary

judgment to Visa and enjoining JSL’s use of the mark. 

AFFIRMED.

9356 VISA INTERNATIONAL v. JSL CORP.