Thursday, March 11, 2010

AMEX Black Card Trademark Infringement

American Express’s Centurion Card, also known as the “black card” has become an iconic status symbol in American pop culture. The card has no limit and a whopping 2,500 annual fee. Introduced in 1999, the card quickly gained attention in books, rap songs, and TV shows. American Express really had a hit on their hands. But they didn’t trademark it. Visa actually owns, more recently in mid 2009, granted issuance of a registered trademark for Black Card.

Last month, Amex filed a complaint with the New York district court, alleging that Visa has:
“perpetrated a scheme to confuse the public and misappropriate for itself the enormous goodwill of the Centurion Card by launching its own, imitation “Black Card” that not only rips off the Centurion Card’s “Black Card” alias, but also, as shown below, copies the trade dress of the unique, distinctive Centurion Card. Even more brazenly, defendant (which audaciously incorporated under the name Black Card LLC and promotes its card at the website, is seeking to register a family of BLACK CARD trademarks so that it can claim the exclusive right to use that mark, which the public long has associated exclusively with the Centurion Card and American Express.”

American Express is going to be fighting an uphill battle. The term “black card” was widely used to refer to the card almost from its inception. It’s unthinkable that Amex didn’t immediately slap a trademark on it. Through the power of 1B intent to use applications, Visa was able to lock in an application in 2005 even though they didn't start using "Black Card" until 2009. AMEX will have to prove its priority of use and association of the term "black card” in the mind of consumers.