- Amex: My Life. My Card. My Slogan.
- April 17, 2008
- Law Firm: Manatt, Phelps & Phillips, LLP - Los Angeles Office
American Express legally has the rights to its “My Life. My Card.” ad campaign featuring celebrity cardholders such as Robert De Niro and Tiger Woods, a federal appeals court said on February 4.
The Second U.S. Circuit Court of Appeals said American Express did not violate the rights of Stephen Goetz, who mailed a proposal to the company on July 20, 2004, with the slogan “‘My Life, My Card’ American Express delivers personalized cards to its cardholders!”
Goetz, who was a consultant for a company called Mez Design at the time, created the idea of enabling credit card customers to personalize their cards by choosing a picture to be printed on the card’s face, the appeals court said.
Separate from Goetz’s inquiry, the court noted, ad shop Ogilvy Group proposed the “My Life. My Card.” campaign to American Express on July 22, 2004, and began a preliminary trademark search for the expression on July 29. Goetz registered for a patent in September 2004.
In November 2004, American Express started using the slogan in a worldwide multimedia ad campaign.
Although it never responded to Goetz’s proposal, American Express sued him in Manhattan federal court for a declaratory judgment that it had not misappropriated the slogan and that Goetz could not make a claim for infringement. In February 2006, the court granted American Express’s motion, dismissing Goetz’s counterclaims for misappropriation and trademark infringement. The court ruled Goetz had not used the slogan as a trademark, noting that he did not contest that American Express independently conceived the slogan.
The appeals court agreed, in part because Goetz never made actual use of the “My Life, My Card” concept: “Goetz employed the slogan ‘My Life, My Card’ to generate interest among potential licensee credit card companies and not to differentiate the origin of his goods or services.” The slogan served as “a mere advertisement for itself as a hypothetical commodity,” the court wrote, noting that there “can be no trademark absent goods sold and no service mark without services rendered.”