Visa Suing to Invalidate Amex's Trademark on Term 'Platinum Card'

Visa International filed suit Thursday to invalidate American Express' Platinum Card trademark registration.

The lawsuit follows American Express' lawsuit in September against Visa board member First USA Inc. over its use of the Platinum Card name.

The case was filed in the U.S. District Court of the Northern District of California in San Francisco.

American Express has offered its Platinum Card since 1984. Visa said the lawsuit is intended to protect its members' right to issue and market Platinum Card products.

Visa claims that the term Platinum Card is a "generic term that is widely used to refer to premium payment cards and other services for an elite group of cardholders."

This latest round between American Express and Visa echoes previous litigation about marketing issues.

In 1988, American Express sued MasterCard International over the association's use of the term Gold Card, which Amex said it had originated in 1966. American Express lost that case.

In 1990, American Express defended its Platinum Card service mark - a type of trademark - for the first time, against First National of Omaha. The case was settled out of court and First National of Omaha changed its Platinum Card to Platinum Addition.

Only three banks market an upscale card with the word platinum, according to David Robertson, president of The Nilson Report, an industry newsletter in Oxnard, Calif.

First USA, which began marketing its Platinum Card earlier this year, and First National of Omaha were joined in March by MBNA Corp., which launched a Platinum Plus card.

MBNA has not been sued by American Express, presumably because of the word Plus. American Express said it is watching MBNA closely.

"This is the time to fight the battle," said Mr. Robertson of Visa's lawsuit against American Express.

Mr. Roberston believes there is pent-up demand to offer a new upscale product like a Platinum card because gold cards have become so common.

American Express said: "This is a predictable reaction to the actions we have taken to protect our trademark. Visa simply desires to ride on the reputation we have built for this clearly distinctive product."

One legal expert who did not want to be identified questioned whether Visa has a legal right to sue American Express over the Platinum Card service mark.

The attorney said Visa's role as an association is to protect the Visa logo. It is Visa's members, not Visa, that will be harmed by American Express' service mark claim.

"We are owned by the banks," said Stephen Theoharis, director of litigation for Visa U.S.A., adding that is Visa that would feel "the harm that is being visited on the marketplace."

"American Express is trying to throw roadblocks in front of banks, rather than competing in a constructive way," Mr. Theoharis said. "Their attempt to own the term Platinum Card is akin to an airline claiming exclusive rights to the term 'first class."'

Unlike the bank-issued Platinum credit cards, American Express' Platinum Card is a charge card. American Express levies a $300 annual fee for its card; the MBNA and First USA cards carry no fee.

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