Most people have heard of the American Express card, popularly known as the “Black Card“.
The AMEX Black Card has become a status symbol of the rich and famous. The card has a $5,000 initiation fee, $2,500 annual fee, $250,000 annual spending requirements, and no credit limit.
Over the past 10 years the black card has been written about in books, rapped and sung about in songs, and shown as a status symbol in movies and TV shows like HBO’s “Entourage”.
So with the card in high demand and ingrained in pop culture, AMEX seems to have a hit on their hands.
The only problem is the American Express never secured the trademark on the term “Black Card” or the domain, blackcard.com, which belongs to its major competitor, Visa.
How did this happen?
Well although as I said this card was popularly known as the Black Card, American Express did not name the card as the Black Card. Instead, American Express calls their product The Centurion Card, which doesn’t exactly roll off the tongue.
It was pop culture, musicians and movie stars types, that gave it the card its well know nickname.
Seems like everyone named the Amex card, the Black Card except for Amex. It does not appear Amex ever held ever applied for or held a trademark for the term “black card” and did not obtain the domain blackcard.com which was first registered in 2001.
Now Visa, has both the trademark on the term Black Card and the domain BlackCard.com
Wait doesn’t a company have a common law trademark right to a term even if they don’t register a trademark, the answer is maybe, but in this case no. Why? Amex never used the term Black Card to advertise or market it.
In recent months, Visa has rolled out the advertising campaign for the “Black Card” and the site at BlackCard.com.
Visa is basically using the “exclusive” reputation of the Amex card in launching their own version, which has only a $495 annual fee (no initiation fee), no spending requirements and a pretty conservative credit line.
On its site Visa sells the Black Card saying:
Become a Black Card member today and enjoy our 24-hour world class Concierge Service ready to assist you with all your business, travel and leisure needs.””””
Make no mistake.
American Express screwed up.
Amex failed to recognize how the real world saw its product, and thereby failed to protect its brand.
It’s most exclusive brand.
Visa saw the crack in the door and slammed it shut on AMEX.
It appears Visa did not even apply for the trademark on the Black Card until 2005, years after the Amex Centurion Card was referred to in pop culture as the Black Card. So Amex had plenty of time, to make a move, apply for a trademark, buy the domain blackcard.com, protect its interest.
Amex now finds their 10 years marking effort and their most exclusive product diluted.
Perfectly legal trademark dilution.
They know have a competitive product with the exact name there product is know by, offering a cheaper product which thereby cheapens their product.
How many people will type in blackcard.com having just heard about it, see the Visa ad and get one, thinking they have “The” “Black Card”?
Lots
If this can happen to Amex it can happen to anyone.
You need to keep your eyes open.
Wide opened.
I know guys who watch Fox Business all day, read the Wall Street Journal and call it a day.
If you don’t know what’s going on around you, keep current not just on news, but on pop culture, trends, entertainment, fashion, all of it, your going to wind up just like the suits at Amex.
Caught with your Johnson slammed in the door.
Great blog Mike. This is what happens when corporations do not think “out of the box” and look only to their Advertising Agencies who have blinders on to what is really happening around them. This is going to cost Amex millions of dollars due to short-sightedness and stupidity in the marketplace.
Great article – I noticed an ad for Visa’s black card when we were in Vegas last month and just laughed at how its not really the black card everybody knows but as you said – perfectly legal dilution of a trademark.
Good read
I wonder what happens to blackcard holders in all the other extensions, are they trademark infringers now, or can they start asking for bounty?
Great blog, Mike. If I were Kenneth Chenault I’d have a long “chat” with my marketing department.
May 27, 2005
1a. Reference to Centurion as Black Card
1b. http://web.archive.org/web/20050601025318/http://en.wikipedia.org/wiki/Centurion_Card
Dec 5, 2008
1a. Black Card LLC files TM
1b. Serial Number 77627276
Amex’s product has become synonymous through the buying public and culturally as the “Black Card” through years of use (public). I believe Amex would have a case. Although it would be severely weakened by the fact that they themselves, Amex, never used it in commerce. That is the high hurdle to overcome. Yet, the public has used it and recognizes Amex’s product in this way (Black Card). It’s how the public comes to recognize a product that’s of the greatest importance to a band and a company’s rights to protect it.
Is there a precedent in law where by the public’s use of a product under a certain namesake given by the public and not the company itself becomes the common law rights of the company in order to protect that brand? I think we will see a Federal case here eventually. There’s too much at stake.
Amex failed to act on the public’s perception of their brand and now they would have to fight an equally powerful (monetary) company to get it back within the public’s view before “Black Card” is further diluted.
Well, that does it. I’m canceling my black card today…
good job andrew…what exactly happened here is that amex totally lost control of their brand the “black card” is a multi million dollar fiasco and very serious. amex could have filed a notice of oppostion using likilihood of confusion in the marketplace. a trademark states their is only one source but in the marketplace their are 2 sources..the public is throughly confused. so amex marketing,legal,branding and all vps are asleep at the wheel. see what one simple generic domain and a 400 dollar tm can accomplish…..billions in negitive brand equity against a competitor.less than 1k at work here and visa took control.so could any sharp domainer in the marketplace….
and if you google “black card” amex is #2, blackcard.com is #3 – but i almost guarantee you that blackcard.com gets a higher ctr because of the domain
domain guy
Not to be picky but this isn’t Andrew, wrong blog
And if blackcard.com would be owned by a domainer and parked (or maybe even not) they would lose it in WIPO
Meh. The super-rich that Amex appeals to don’t need blackcard.com to know the difference. Amex is Amex. It’s the wannabe posers that are gonna go for Visa.
Quite interesting to see that VISA are buying the sponsored keywords for “black card” on google.co.uk and google.com but at for instance the Swedish localized version of Google (google.se) American Express are buying the sponsored keywords:
Visa Black Card
http://www.BlackCard.com The World’s Most Prestigious Credit Card. Apply Now. U.S. SSN Required.
American Express™
AmericanExpress.com Med American Express blir vardagen lyxigare och enklare. Ansök online!
actually, i think visa screwed up by “stealing” a name used by people to describe the competitor.
i mean, if you take that name and use it as your own, you look like a total copycat. it’s not cool.