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Elvis Presley Enters. v. Capece - 141 F.3d 188 (5th Cir. 1998)


In determining whether a likelihood of confusion exists, this trial court considers the following nonexhaustive list of factors: (1) the type of trademark allegedly infringed, (2) the similarity between the two marks, (3) the similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant's intent, and (7) any evidence of actual confusion. No one factor is dispositive, and a finding of a likelihood of confusion does not even require a positive finding on a majority of these digits of confusion. In addition to the listed factors, a court is free to consider other relevant factors in determining whether a likelihood of confusion exists.


Plaintiff-appellant Elvis Presley Enterprises, Inc. (EPE) was the assignee and registrant of all trademarks, copyrights, and publicity rights belonging to the Elvis Presley estate. EPE has at least 17 federal trademark registrations, as well as common-law trademarks, for "Elvis Presley" or "Elvis" and other registrations for his likeness. However, none of these marks was registered for use in the restaurant and tavern business. Prior to trial, EPE announced plans to open a Memphis nightclub as part of a possible worldwide chain. In April 1991, defendant-appellee Barry Capece, operating through the limited partnership Beers 'R' Us, opened a nightclub on Kipling Street in Houston, Texas called "The Velvet Elvis." On August 28, 1991, Capece filed a federal service mark application for "The Velvet Elvis" for restaurant and tavern services with the United States Patent and Trademark Office (PTO).  The PTO issued a service mark registration to Capece for use of “The Velvet Elvis” mark on March 9, 1993. When the Kipling street nightclub closed, Capece planned to open a new nightclub that would also bear the name “The Velvet Elvis.” Thereafter, EPE contacted Capece by letter, threatening the latter with legal action if the bar opened with “Elvis” in its name. Notwithstanding the threat, Capece proceeded to open and name the bar according to the plan. Subsequently, EPE filed suit claiming the inclusion of its “Elvis” trademark in the service mark “The Velvet Elvis” coupled with Capece’s use of the image and likeness of Elvis Presley in advertising and promoting Capece’s bar created confusion as to whether EPE licensed, endorsed or was affiliated with “The Velvet Elvis” nightclub. The District Court ruled in favor of Capece, holding that its service mark did not infringe or dilute EPE’s federal and common-law trademarks. EPE appealed.


Did Capece’s service mark infringe or dilute EPE’s federal and common-law trademarks?




The Court held that Capece’s service mark infringed or diluted EPE’s federal and common-law trademarks. The Court averred that EPE’s registration of the “Elvis” marks established that EPE was entitled to protection from infringement by junior users; meeting the threshold requirement that EPE must possess a protectable mark. In the case at bar, the Court found that there was a likelihood of confusion that existed between the parties’ marks, thereby entitling EPE to injunctive relief.

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