American Express Marketing & Development Corp. et al v. Black Card LLC - Document 102
OPINION & ORDER re: 56 MOTION for Judgment as to Defendant's Counterclaim for Declaratory Relief against Plaintiffs and to dismiss each of Plaintiffs claims and the Complaint with prejudice filed by Black Card LLC, 54 MOTION for Parti al Summary Judgment filed by American Express Travel Related Services Company, Inc., American Express Marketing & Development Corp. Amex has demonstrated that summary judgment is appropriate on its claim that the PTO registration of BC's "B LACKCARD" mark should be cancelled because the mark is not inherently distinctive and BC has not demonstrated secondary meaning. Amex's motion for summary judgment on its § 2(e) cancellation claim is granted and BC's motion for summary judgment on that claim is denied. (Signed by Judge Denise L. Cote on 11/17/2011) (lmb)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
AMERICAN EXPRESS MARKETING AND
DEVELOPMENT CORP. and AMERICAN EXPRESS :
TRAVEL RELATED SERVICES COMPANY, INC., :
BLACK CARD LLC,
David H. Bernstein
Eric D. Meyer
Josephine D. Coakley
Debevoise & Plimpton, LLP
919 Third Avenue, 31st Floor
New York , NY 10022
Peter D. Vogl
Lee A. Armstrong
222 East 41st Street
New York, NY 10017
Gregory A. Clarick
Clarick Gueron & Reisbaum LLP
40 West 25th Street, 12th Floor
New York, NY 10010
Michael T. Hornak
Natalie M. Gowin
Ronald P. Oines
Rutan & Tucker LLP
611 Anton Blvd, Suite 1400
Costa Mesa, CA 92626-1931
10 Civ. 1605 (DLC)
OPINION & ORDER
DENISE COTE, District Judge:
Plaintiffs American Express Travel Related Services
Company, Inc., and American Express Marketing & Development
Corporation (collectively “Amex”)1 challenge the registration of
the trademark “BLACKCARD” by defendant Black Card LLC (“BC”),
and have brought various other claims under the federal Lanham
Act, 15 U.S.C. §§ 1051 et seq., and New York state law.
one remaining counterclaim seeks a declaratory judgment that
Amex has never used the marks at issue here.
Both parties have moved for summary judgment.
addresses the cross motions for summary judgment on Amex’s
§ 2(e) cancellation claim.
For the reasons set forth below,
Amex’s motion is granted.
The Centurion Card
A. Amex’s Payment Network
The following facts are undisputed, unless otherwise
Amex is a leading provider of credit card and related
financial and consumer services.
There are two types of credit
cards that run on Amex’s payment network.
American Express Travel Related Services Company, Inc.,
licenses trademarks from its subsidiary, American Express
Marketing & Development Corporation. For purposes of this
Opinion, no distinction need be drawn between these entities.
are issued directly by Amex.
“Network” cards run on the Amex
payment network but are not issued by Amex itself; rather, cobranding banks issue the cards in partnership with a division of
Amex called Global Network Services (“GNS”).
Like many credit card issuers, Amex has sought to use color
as a key branding mechanism for its cards.
As a core element in
a card’s broader graphic design, color functions not merely to
distinguish an issuer’s card from competing cards of different
issuers, but also to distinguish among cards emanating from the
Amex has been particularly successful in wielding this
color branding strategy.
1958, was purple.
Its first card, originally issued in
That card became the now-ubiquitous “Green
Card,” the color of money, in 1969.
Card”, first issued in 1966.
Next in line came the “Gold
In 1984, continuing to mine the
vein of precious metals, Amex issued its “Platinum Card”.2
the mid-1980s, Amex had established the framework for a colorbased hierarchy of credit cards.
The cards are chiefly
distinguishable based on the increase in benefits available at
The Platinum Card’s color would be more commonly recognized as
silver. Gold trumps silver in the public eye, and so American
Express faced the branding challenge of demonstrating that its
newest card exceeded the Gold Card in services, benefits, fees,
and prestige. Platinum being more valuable than gold, it did so
by placing the word “Platinum” on the card. By contrast,
American Express’s Green, Gold, and Centurion cards do not bear
an identifying label; rather, color itself is the major
each level and larger annual fees associated with each card.
benefits are for the most part linked to the amount a consumer
charges to his or her card (for example, extra mileage in an
airline’s frequent flier program), a higher spender would likely
choose to upgrade from a Green to a Gold Card, and from Gold to
Platinum -- in theory, greater benefits justify the higher fee.
Amex continued with variations on the color-coded theme,
launching “Blue from American Express” (a no-fee card, clear
with a blue square in the center) in 1999, the “Plum Card”
(purple-colored, for small businesses) in 2007, and the “Zync
Card” (white-colored, with customizable benefits) in 2010.
B. Development of the Centurion Card
In 1998, Amex began development of the “Centurion Card”,
which it issued in the United Kingdom that same year and the
United States in 1999.
The Centurion Card is black in color,
with the imprinted head of a Roman Centurion behind the
cardholder’s number at its center.
At present, the Centurion
Card sits at the pinnacle of the Amex hierarchy of cards.3
issued by invitation only to existing Gold and Platinum
cardmembers who meet a minimum threshold for annual charges on
Chief benefits include upgrades and accelerated
At some time prior to 1998, Amex distributed a black-colored
membership card to a limited number of high-value private
mileage on a number of airlines, room and service upgrades at
various hotel chains, and access to a personal “concierge”.
In 1999, Amex sent an “invitation letter” (“1999 Invitation
Letter”) to potential Centurion cardholders.4
In the letter,
Kenneth Chenault, then Amex’s President and Chief Operating
Officer, introduced Centurion by stating that “a rumor has
persisted that American Express issues a black charge card to a
select group of Cardmembers.”
While the 1999 Invitation Letter
consistently referred to the “Centurion Card” and “Centurion
membership,” it closed with the following:
have started out as a rumor.
“The black card may
However, now you have a chance to
become one of the first, and I might add, one of the few, to
actually carry the legendary black card –- the Centurion Card
from American Express.”
C. An Amex “Black Card”?
Amex registered “Centurion” as a service mark with the
United States Patent and Trademark Office (“PTO”) in September
In choosing the name “Centurion” for its new premium
card, Amex rejected at least some candidates for names that
included the words “Black Card,” such as “AXP Black Card”.
This practice has continued. Amex solicits new Centurion
cardholders by invitation to customers who already have an Amex
card; it does not have an application process for Centurion.
Nevertheless, Amex executives expected prospective consumers to
refer to the card as Amex’s “Black Card.”5
Amex executives and employees have referred to Centurion
as Amex’s “black card” or “Black Card”, albeit sporadically, in
external communications since 1999.
For instance, Hayes stated
in a speech to The Executive Council, a corporate networking
group, “One of [Amex’s] best products has no advertising
In fact[,] American Express spends exactly zero
dollars marketing it . . . [I]t is the Centurion card –
affectionately known in the market place as the Black Card.”
general, however, Amex follows a strict protocol whereby formal
communications with Centurion cardholders refer to the card as
“Centurion” with no reference whatsoever to a “black card” or
the “Black Card”.
In his deposition testimony, Amex Chief Marketing Officer John
Hayes (“Hayes”) was asked whether he remembered internal debate
about the “Centurion” name in 1998 and 1999. He responded:
The conversation in the company was between
whether or not we should be calling it the Centurion
Card in our marketing materials or whether or not we
should be referring to it as The Black Card or Black
Card. And where we netted out was that we recognized
that the world at large would refer to it as The Black
Card. But that we wanted to give it a name that was
steeped in our history and something that we felt
would be very closely associated with American Express
from its history. So we chose to formally call it the
Centurion Card, but recognized that it was informally
going to be referred to as The Black Card.
From its launch in 1999, Amex’s Centurion brand has
achieved significant and enduring visibility in the media and
In those domains, Amex’s premier product is
referred to almost exclusively as its “black card.”
voluminous record in this case includes 245 news articles,
dating from 1987 to 2011, making reference to an Amex “black
In popular culture, Amex’s “black card” has come to be
associated with wealth, extravagant luxury, and the celebrity
lifestyle, with references and appearances in song lyrics,
movies, and television shows.
While Amex does not engage in traditional advertising for
Centurion, it does actively pursue product placement in films
It has also sought targeted media coverage for
“members-only” Centurion events with celebrities in attendance,
anticipating that some coverage would refer to Centurion as
Amex’s “Black Card” or else use the terms interchangeably.
In the wake of Centurion’s launch and ensuing media and
cultural exposure, other credit and charge card issuers sought
to introduce black-colored products with premium benefits aimed
at affluent consumers.
Those running on the Amex payment
Five of these articles predate Centurion’s 1999 launch, and
refer to an Amex “black card” in connection with rumors of a
mystical “black card” offered solely to global elites. The
remainder use “black card” in connection with the Centurion
network and issued in partnership with Amex’s GNS division
included the Citi Chairman Card, the Bank of America Accolades
Card, the Virgin Atlantic Black Card, and the Banco Popular
Amex’s GNS and Proprietary divisions are separate.
Therefore, a premium card running on the Amex payment network
but issued by a co-brand partner bank is considered a Centurion
At least one black-colored credit card, the
Sotheby’s Card, has run on MasterCard’s payment network.
D. Amex’s Trademarks
Amex has applied for and registered trademarks with the PTO
in conjunction with its various cards, including “AMERICAN
EXPRESS GREEN CARD,”7 “PLATINUM CARD,” “BLUE FROM AMERICAN
EXPRESS,” “PLUM CARD,” and “ZYNC CARD”.
Amex also trademarked
“GOLD CARD”; that mark was held to be generic, however, in 1988.
See American Express Co. v. MasterCard Int’l Inc., 685 F.Supp.
76, 78 (S.D.N.Y. 1988).
In 2004, Amex applied to the PTO to
trademark “BLACK FROM AMERICAN EXPRESS”.
That trademark was
never registered, however; the PTO issued a notice of
abandonment in 2007 after Amex failed to file a statement of
As part of the registration process, the PTO directed American
Express to disclaim any exclusive right to use the phrase “GREEN
CARD apart from the mark as shown because it merely describes a
feature of the mark.”
As noted above, in partnership with Amex’s GNS division,
several banks have issued black-colored credit cards running on
the Amex payment network.
As it does in connection with all of
its proprietary cards, Amex has issued naming conventions for
the black cards.
These conventions are intended to ensure that
consumers do not confuse network cards with the Centurion.
conventions specify that the name of the issuer must be present
in any usage featuring “Black Card.”8
BC’s Black Card
A. Black Card LLC
BC is a Wyoming limited liability company.
It developed a
premium credit card product along with co-branding partners
Barclays Bank Delaware (“Barclays”) and Visa U.S.A., Inc.
(“Visa”), which it began issuing in December 2008.
(“Black Card”) is black in color, with a weave-patterned
The words “BLACK CARD” appear in contrast print,
centered within the upper half of the card.
Next to name, card
number, and expiration date in the lower half is the notation
“CARDMEMBER SINCE [year]”.
The blue and orange “Visa” logo sits
in the lower right hand corner.
Black Card holders pay an
For example, “The [Issuer Name] Black American Express Card” is
an acceptable “first usage,” and “The Black [Issuer Name] Card”
is an acceptable “subsequent usage.” “The Black Card by/from
American Express” is an example of an unacceptable usage.
annual fee and receive services and benefits including access to
a “concierge”, airport lounge access, travel insurance, rewards
programs, and gifts.
B. Development of BC’s Black Card
BC CEO Scott Blum (“Blum”) has been a Centurion cardholder
since Amex first introduced the card in 1999.
In the late
1990s, he had founded the Internet retailer Buy.com, which
issued a black-colored credit card co-branded with Visa and
In 2005, Blum, then-CEO of an Internet company
called Yub, Inc., (“Yub”), began developing a business concept
for a black-colored premium credit card to be called the “Black
In his deposition testimony, Blum explained that he was
drawn to that particular name for a high-end card to be marketed
to an affluent consumer base because “I wanted to have a name
that I think the public would know as a high level of service, a
high level product, a product that suggests quality and
But, Blum also told Visa that his inspiration for the
Black Card was his frustration with Centurion services as a
long-time Centurion cardholder -- that he sought to build “a
better Black Card.”
Blum later elaborated that “I think that the public would match
black with a high level of service because it’s been used for
tens of years as being a high level in different industries.”
On September 20, 2005, Yub applied to the PTO for the mark
The PTO published the mark for opposition in May
No oppositions were filed, and the PTO issued a Notice of
Allowance for the mark in August 2006.
After BC’s incorporation
in July 2007, Yub assigned its rights in the as-yet-unregistered
mark to BC (in addition to rights in a number of related marks
for which Yub had applied).
In July 2008, BC and Barclays entered into an agreement to
issue a co-branded credit card.
Both parties then approached
Visa, intending that the co-branded Black Card run on the Visa
Visa and BC entered into a co-branding
agreement in November 2008; in that contract, BC indemnifies
Visa for “any claims relating to the use of BLACK, BLACKCARD,
BLACK CARD, or any mark incorporating the word “BLACK” either
alone or as a composite mark with any other element . . . .”
A Visa executive has testified that Visa believed that BC
could acquire trademark rights in “BLACKCARD” because Amex had
let its rights in the mark “lapse.”
In a November 5, 2008 e-
mail from Blum to Visa’s Garth Petersen, Blum wrote: “We also
know that American Express canceled its application for the mark
Black Card in 2007.”
Both Barclays and Visa acknowledge their
awareness of a link between “Black Card” and Amex, and a concern
that Amex might seek to enforce trademark rights.
Archino of Barclay’s testified that “Barclays knows that Black
Card was out there in the industry, that there was – that the
Centurion Card was referred to as a Black Card.”
Robin Binkley of Visa testified that “it is common knowledge
that the Centurion Card is often referred to as ‘The Black
C. BC’s Disclaimer
As part of the co-branding agreement, Visa insisted that BC
disclaim any rights in the word “BLACK” on its own.
resisted, out of a concern that a disclaimer would weaken any
On November 26, 2008, however, BC’s trademark
attorney filed a disclaimer with the PTO to accompany two of its
applications, including the one that would ultimately be
registered several months later.
The disclaimers read:
claim is made to the exclusive right to use BLACK apart from the
mark as shown.”
D. Registration of the Disputed Mark
BC and its predecessors filed a total of thirteen
applications for registration of trademarks between 2005 and
Of these applications, the PTO issued a registration only
for the “BLACKCARD” mark.
The other applications included
“BLACKCARD” (stylized), “BLACK CARD” (script), “BLACK CARD”
(stylized), “BLACK CARD CONCIERGE”, “BLACK CARD BENEFITS”,
“BLACK CARD EXCLUSIVE REWARDS”, “BLACK”, “BLACK CARD TELLAPAL”,
“MY BLACK CARD”, “MY BLACK CARD REWARDS”, “BLACK CARD REPORT”,
and “BLACK CARD BUSINESS”.
For several of these applications,
PTO examiners either refused to register or suspended BC’s
applications on the grounds that the sought-after trademark was
Some examiners referenced the Centurion
card and requested that BC address whether “consumers
immediately [sic] this of a different provider of credit card
services in connection with use of the term ‘black card’[.]”
The trademark registration certificate for the “BLACKCARD”
mark issued on April 29, 2009.
The certificate, however, does
not make note of the voluntary disclaimer by BC in November
Amex and BC dispute the significance of the absence of
any reference to the disclaimer, primarily through the reports
of competing experts.
Amex’s expert witness, former PTO
Assistant Commissioner for Trademarks Jeffrey M. Samuels,
asserts that the absence of the disclaimer on the registration
certificate or elsewhere in the PTO Examiner’s file indicates
that the Examiner did not actually consider the disclaimer in
reaching her conclusion to register the mark.
Samuels, had this procedural error not occurred, the
registration would not have issued, because “after giving effect
to the disclaimer, the mark would have consisted of no matter to
which exclusive rights were or could be claimed.”
former Administrative Trademark Judge on the Trademark Trial and
Appeal Board (“TTAB”) Rany Simms, agrees that “there is no
record of the Examining Attorney ever acting upon” the
But Simms argues that “BLACKCARD” is properly
considered a “unitary” mark, “for which no disclaimer would be
required or permitted.”
If so, there was no procedural error,
and the mark is entitled to the rebuttable presumption of
distinctiveness accorded by virtue of PTO registration.
On April 28, 2009, the PTO issued registration for the
“BLACKCARD” mark to BC.
Amex filed a petition with the TTAB to
cancel registration of the “BLACKCARD” mark on May 13, 2009.
February 16, 2010, BC filed suit against Amex in the District of
Wyoming, seeking a declaratory judgment that Amex does not have
protectable rights in the marks BLACK CARD or BLACKCARD and that
BC’s use of the marks does not infringe on any valid Amex
BC also brought claims alleging trademark
infringement, unfair competition under federal trademark law,
and unfair competition and trademark infringement under New York
Amex filed the instant action on February 26, 2010.
addition to its cancellation claims under § 2(d) and § 2(e) of
the Lanham Act, Amex alleged trademark infringement and false
advertising under § 43(a) of the Lanham Act, cyberpiracy under §
43(d) of the Lanham Act, and unfair competition and
trademark/trade dress dilution under New York state law.
complaint sought both injunctive relief and monetary damages.
Amex subsequently moved to dismiss the Wyoming suit as an
anticipatory filing on March 1, 2010.
The TTAB suspended its proceedings pending the disposition
of the federal lawsuits on May 7, 2010.
On November 5, 2010,
the District Court in Wyoming granted Amex’s motion and
dismissed BC’s complaint.
BC filed an amended answer to Amex’s
complaint on December 10, 2010, asserting its original Wyoming
claims as counterclaims against Amex.
By stipulation of May 19,
2011, Amex’s claims for monetary damages and BC’s trademark
infringement and unfair competition claims under both federal
and New York law were dismissed with prejudice.
Following the completion of discovery, Amex and BC filed
cross motions for summary judgment on May 23, 2011.
for partial summary judgment under its Lanham Act § 2(e)
BC moves for summary judgment on its own
counterclaim for declaratory relief, as well as against all of
The motions became fully submitted on July 27,
This Opinion addresses solely the cross-motions on the
§ 2(e) cancellation claim.
Summary judgment will be granted where, upon all of the
submissions taken together, “the movant shows that there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.”
Fed. R. Civ. P.
The moving party bears the burden of demonstrating the
absence of material factual question, and in making this
determination, the court must view all facts in the light most
favorable to the non-moving party.
Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986); Sista v. CDC Ixis N. Am., Inc., 445
F.3d 161, 169 (2d Cir. 2006).
When a non-moving party fails to
oppose a motion for summary judgment, a court
may not grant the motion without first examining
the moving party’s submission to determine if it
has met its burden of demonstrating that no
material issue of fact remains for trial. If the
evidence submitted in support of the summary
judgment motion does not meet the movant’s burden
of production, then summary judgment must be denied
even if no opposing evidentiary matter is
D.H. Blair & Co., Inc. v. Gottdiener, 462 F.3d 95, 110 (2d Cir.
2006) (citation omitted).
Under § 37 of the Lanham Act, a court “may determine the
right to registration [and] order the cancelation of
registrations, in whole or in part[.]”
15 U.S.C. § 1119.
Section 14 of the Lanham Act permits “any person who believes
that he is or will be damaged . . . by the registration of a
mark” to petition for the mark’s cancellation.
Despite this broad designation of the class of persons
who may challenge registration, courts have required the
challenger to “have a ‘real interest’ in the proceedings and . .
. a ‘reasonable’ basis for his belief of damage.”
Simpson, 170 F.3d 1092, 1095 (Fed. Cir. 1999).
interest” in cancellation proceedings distinguishes a petitioner
from a “‘mere intermeddler’ whom the standing requirements would
bar from initiating cancellation proceedings.”
Int’l Order of
Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 1092 (Fed
Competition with the applicant is a “strong
indication” that there is a reasonable basis for a belief of
Famous Horse Inc. v. 5th Ave. Photo, Inc., 624 F.3d 106,
113 (2d Cir. 2010) (Lanham Act standing).
The Lanham Act provides that a mark “shall be refused
registration” if it “[c]onsists of a mark which (1) when used on
or in connection with the goods of the applicant is merely
descriptive . . . of them[.]”
15 U.S.C. § 1052(e)(1).
restriction of registration arises from the well recognized
principle that “[t]o be valid and protectable, a mark must be
capable of distinguishing the products it marks from those of
Lane Capital Management, Inc., v. Lane Capital
Management, Inc., 192 F.3d 337, 344 (2d Cir. 1999).
“There are five different categories of terms with respect
to the protection of a mark:
arbitrary, and fanciful.”
generic, descriptive, suggestive,
“Fanciful, arbitrary, and
suggestive marks are deemed inherently distinctive.”
Descriptive marks are not and require a showing of secondary
meaning to be protectable.
Amex’s § 2(e) cancellation
claim hinges on the often blurry distinction between descriptive
and suggestive marks.
“Descriptive marks are those consisting of words
identifying qualities of the product.”
Star Indus., Inc., v.
Bacardi & Co. Ltd., 412 F.3d 373, 385 (2d Cir. 2005).
“convey an immediate idea of some characteristic or attribute of
Papercutter, Inc., v. Fay’s Drug Co., Inc., 900
F.2d 558, 562 (2d Cir. 1990).
A descriptive mark “is one that
tells something about a product, its qualities, ingredients or
It may point to a product’s intended purpose,
its function or intended use, its size, or its merit.”
Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1076 (2d
A suggestive mark, on the other hand, “merely suggests the
features of the product, requiring the purchaser to use
imagination, thought, and perception to reach a conclusion as to
the nature of the goods.”
Lane Capital, 192 F.3d at 344; see
also Star Indus., 412 F.3d at 385 (“Suggestive marks are those
that are not directly descriptive, but do suggest a quality or
qualities of the product, through the use of imagination,
thought and perception.” (citation omitted)).
As a matter of
policy, the “guiding principle in distinguishing protectable
from unprotectable marks is that no one enterprise may be
allowed to attain a monopoly on designs that its competitors
must be able to use in order to effectively communicate
information regarding their products to consumers.”
Industries, 412 F.3d at 382.
The classification of a mark into one of the five
categories is a question of fact.
“The factual issue presented
is how the purchasing public views the mark. . . .
relevant purchasing public is not the population at large, but
prospective purchasers of the product.”
Lane Capital, 192 F.3d
When the PTO issues a certificate of registration for a
mark, a rebuttable presumption arises that the mark is
Papercutter, 900 F.2d at 562-63.
the PTO without proof of secondary meaning creates the
presumption that the mark is more than merely descriptive, and,
thus, that the mark is inherently distinctive.”
192 F.3d at 345.
The fact of registration, however, “shall not
preclude another person from proving any legal or equitable
defense or defect . . . which might have been asserted if such
mark had not been registered.”
15 U.S.C. § 1115(a).
challenging the registration “bears the burden to rebut the
presumption of [the] mark’s protectability by a preponderance of
Lane Capital, 192 F.3d at 345.
may be rebutted by a showing that the mark is descriptive, not
Papercutter, 900 F.2d at 563.
The presumption, in short, is a “procedural advantage” to
the registrant and nothing else.
Lane Capital, 192 F.3d at 345.
It is not “itself evidence of how the public actually views the
“The presumption of validity that federal
registration confers evaporates as soon as evidence of
invalidity is presented.
Its only function is to incite such
evidence, and when the function has been performed the
presumption drops out of the case.” Id. (citation omitted).10
It is assumed without deciding that the mark “BLACKCARD” is
entitled to a rebuttable presumption of protectability by virtue
of its 2009 PTO registration.11
Amex has demonstrated by a
preponderance of the evidence, however, that the mark is
Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 239
(5th Cir. 2010), cited by BC, has also adopted a similar
rebuttable presumption test.
The parties hotly dispute whether procedural error by the PTO
Examining Attorney should nullify the presumption. The parties’
experts agree that there is no record that the PTO Examining
Attorney ever acted upon the disclaimer that BC filed to
disclaim any rights to the word “Black” alone. BC argues that
the mark is a unitary one for which no disclaimer was
permissible or necessary.
descriptive, and thus not protectable absent secondary meaning.
No reasonable factfinder could find that a prospective consumer
would consider the mark to be suggestive rather than
BC’s mark BLACKCARD12 appears on a black-colored credit
As with other credit cards, it enables its holders to
make purchases on credit.
The black color of the card is an
essential feature or characteristic of the card.
advertising emphasizes the color, underscoring this point.13
Within the credit card industry, the word “black” is
descriptive in a second sense as well.
Largely through the
efforts of Amex, the word “black”, when used in connection with
credit cards is understood to describe access to premium credit
The PTO registered the mark “BLACKCARD”, i.e. without a space
between the words. An application for the mark “BLACK CARD” has
been stayed pending the outcome of this litigation. In its
application for a stylized version of the “BLACK CARD” mark, BC
applied to amend the application to remove the space in
September 2007. It justified the amendment by stating that the
removal of the space “does not change the general commercial
impression of the mark, because the mark as amended retains the
same overall look, spelling and connotation, but merely changes
the mark from two words to one word, and, therefore, creates the
impression of being the same mark.” BC’s explanation to the PTO
was sensible, and the fact that the mark is one word rather than
two does not alter its descriptive nature.
While not essential to the holding in this Opinion, BC’s
disclaimer of any exclusive right to the word BLACK is further
evidence that BC did not intend or believe that the word could
be used as a mark to distinguish its products from those of its
Indeed, this was the very reason that Blum chose
the mark “BLACKCARD” for his credit card.14
The term “BLACKCARD”
immediately calls to mind an important aspect or characteristic
of the product and describes the product’s principal features
It is, in essence, communicating the grade of
credit card offered by BC.
The black-colored credit card
marketed by BC is central enough to the overall product, however
defined, to render “BLACKCARD” a descriptive mark.
A descriptive mark is still protectable if the mark’s
proponent can demonstrate secondary meaning in the mark.
offered no evidence of secondary meaning accruing to the mark
“BLACKCARD”, and does not pursue this line of argument in its
Accordingly, summary judgment for Amex on its
In its first major national advertisement, BC was at pains to
distinguish itself from the crowded field of premium credit
cards: “The Black Card is not just another piece of plastic.
Made with carbon graphite, it is the ultimate buying tool.”
In contrast, Amex submitted two consumer surveys in support of
its argument that secondary meaning in the mark “black card” has
accrued to Amex. The surveys were conducted by Hal Poret
(“Poret Survey”) and George Mantis (“Mantis Survey”).
The Poret Survey surveyed a sample of 200 individuals with
a household income of $250,000 or more. 33.5% of respondents
stated that they associated “Black Card” with only one company:
Amex. Surveying an ostensibly broader group, those who
currently have or within the next year will consider getting a
credit, charge, or debit card with an annual fee of $450 or
more, the Mantis Survey found that 19.4% of respondents
indicated a unique association of the name “Black Card” with
cancellation claim under § 2(e) of the Lanham Act is
BC makes two arguments against cancellation.
argues that Amex lacks standing to bring a cancellation claim.
Second, BC argues that its mark is suggestive of the services
offered by BC and its partners, and thus protectable even in the
absence of secondary meaning.
Amex has standing to challenge registration of the
It has a significant, concrete, and real
interest in proceedings to challenge the registration.
markets its own black-colored credit card and has referred to
the Centurion as “the black card” in communications to
Indeed, BC sued Amex for infringement.
Amex has a strong incentive to preserve its ability to use the
mark in commerce in the very market niche in which BC operates.
No more is required to establish standing to bring a
The cases cited by BC are not to the contrary. Future Media
Architects, Inc. v. Deutsche Luftansa AG arose out of a dispute
over rights to the domain name www.lh.com. No. 08 Civ. 2801
(LAK), 2008 WL 2686622 (S.D.N.Y. July 8, 2008). The defendant
operates Lufthansa Airlines. The court held that the plaintiff
had no standing to bring a claim to cancel the defendant’s
registration in the “Lufthansa” mark since it had no “reasonable
basis” for a belief that it would be damaged in the absence of
cancellation. Id. at *1. Similarly, in Yurman Design Inc. v.
Chaindom Enters., Inc., No. 99 Civ. 9307 (JFK), 2000 WL 897141,
at *1 (S.D.N.Y. July 5, 2000), a party had no standing to seek
cancellation of a mark because it had “no commercial or
BC’s second argument boils down to the following:
BLACKCARD is suggestive of high-end financial services.
Certainly, in the cases on which BC relies, Giorgio Beverly
Hills Inc. v. Revlon Consumer Products Corp., 869 F.Supp. 176,
180-81 (S.D.N.Y. 1994), and Guinness United Distillers &
Vintners B.V. v. Anheuser-Busch, Inc., No. 02 Civ. 0861 (LMM),
2002 WL 1543817, at *3 (S.D.N.Y July 12, 2002), the name of a
color was held to be a protectable mark.
In both Giorgio and
Guinness, the product was a golden-hued liquid (perfume and
scotch whiskey, respectively) contained in a bottle with red
trade dress; the marks were “RED” and “Red Label”, respectively.
In the case of the Red Label mark, the court noted that the mark
did not serve as a grade designation and, relying on evidence of
secondary meaning such as the manufacturer’s advertising
campaign, found that the mark functioned to distinguish the
product from other alcoholic beverages.
Guinness, 2002 WL
1543817, at *3.
While the line between a descriptive and a suggestive mark
can be difficult to draw, in this case “BLACKCARD” is
descriptive of both the physical manifestation of the credit
card and of the niche credit card services that can be accessed
pecuniary interest” that would be damaged by the registration.
Id. at *4. Finally, Momentum Luggage & Leisure Bags v.
Jansport, Inc., No. 00 Civ. 7909 (DLC), 2001 WL 830667 (S.D.N.Y.
July 23, 2001), is inapposite. It involved an infringement, not
a cancellation claim. Id. at *5.
through the card.
While "REDII may have suggested romance and
passion to the purchasers of Giorgiols perfume, Giorgio, 869
F.Supp. at 181 1
s the color of the
card and the category of credit card
ces into which BC's
Amex has demonstrated that summary judgment is appropriate
on its claim that the PTO registration of BC's "BLACKCARD
should be cancelled because the mark is not inherently
distinctive and BC has not demonstrat
summary judgment on its
granted and BC/s motion for summary judgment on that
claim is deni
New York New York
November 17, 2011
ates District Judge