Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 07 APRIL 2008

Use, Not Conception, Governs Priority Of Trademark Rights

McDermott Will & Emery
Explore more from McDermott Will & Emery

The U.S. Court of Appeals for the Second Circuit affirmed the district court’s grant of summary judgment in favor of the plaintiff and dismissal of the trademark infringement and misappropriation counterclaims asserted by defendant.

United StatesIntellectual Property
Christine Pepe
Christine Pepe
Author LinkedIn connections

The U.S. Court of Appeals for the Second Circuit affirmed the district court's grant of summary judgment in favor of the plaintiff and dismissal of the trademark infringement and misappropriation counterclaims asserted by defendant. American Express Co. v. Stephen G. Goetz and Gardner Design Group, LLC, Case No. 06-2184 (2nd Cir., Feb. 4, 2008) (per curiam).

Goetz, while working at a design company, formulated an idea to enable credit card customers to personalize a card by choosing a photograph to be printed on the card's face. In proposing this idea to potential clients, Goetz prominently displayed the slogan "MY LIFE, MY CARD." In July of 2004, Goetz sent this proposal to American Express, as well as to other credit card companies. In September of 2004, he registered the domain name www.mylife-mycard.com, created an internet-based demonstration of his card personalization concept and filed a

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

PTAB/USPTO Update - October 2026

The USPTO has released new templates and guidance for AIA trial proceedings, announced key appointments including a Chief AI Officer, and published updated procedures for patent applications and subject matter eligibility declarations. Director Squires delivered multiple addresses emphasizing the constitutional importance of intellectual property rights while the agency expanded its community engagement efforts and international collaboration through WIPO's Global IP Assignment Platform pilot program.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

U.S. Government Backs Fair Use For AI Training In OpenAI Copyright Litigation

The U.S. government has filed a Statement of Interest of the United States of America under 28 U.S.C. § 517 in the Southern District of New York multidistrict litigation over OpenAI’s use of copyrighted works to train large language models. The filing appears to be the federal government’s first direct intervention in the wave of artificial intelligence (AI) training copyright cases, and it advises the court to treat model training (separate from use of AI to generate outputs) on copyrighted text standing alone as a highly transformative fair use under current law.
United StatesIntellectual Property
Lowenstein Sandler LLP
Lowenstein Sandler LLP