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Elvis Presley Enters. v. Capece - 950 F. Supp. 783 (S.D. Tex. 1996)

Rule:

Courts have relied on the following list of factors in determining whether a defendant's use of a mark or image creates a likelihood of confusion: (1) the type of trademark alleged to have been infringed; (2) the similarity of design 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 medium utilized; (6) the defendant's intent; and (7) evidence of actual confusion. This list is neither exhaustive nor exclusive. The absence or presence of any one factor ordinarily is not dispositive; indeed, a finding of likelihood of confusion need not be supported by even a majority of the seven factors.

Facts:

Elvis Presley Enterprises (EPE) is a Tennessee corporation formed in 1981 under the terms of a testamentary trust created by Elvis Presley (Elvis). EPE was the assignee and registrant of all trademarks, copyrights, and publicity rights belonging to the Presley estate, including over a dozen United States federal trademark registrations and common law trademarks of Elvis' name and likeness. None of these marks, however, were registered service marks for use in the restaurant and tavern business. In April 2001, Barry Capece (Capece), operating through the limited partnership, “Beers ‘R’ Us, opened a nightclub named “The Velvet Elvis,” under which a federal service mark was applied for and granted by the United States Patent and Trademark Office. Thereafter, EPE filed a complaint alleging trademark infringement, unfair competition, and dilution and sought damages and injunctive relief against defendant Capece and his companies for using Elvis' name and image to advertise the bar and decorating the bar with Elvis memorabilia. Defendants sought a judgment as a matter of law, arguing that the bar’s theme and décor was a parody and that, therefore, no customer confusion could exist.

Issue:

  1. By using Elvis Presley’s name and image to advertise the bar, did the defendant companies create customer confusion?
  2. Did the defendant companies infringe on EPE’s trademark rights?

Answer:

1) No. 2) Yes.

Conclusion:

The court held that the bar's parodic message, its lack of similarity to corporation's mark, products, or services, the difference between the parties' customers, and the companies' lack of intent to confuse were sufficient to withstand an argument of customer confusion under either the Lanham Act, 15 U.S.C.S. § 1051 et seq., or common law. However, the court determined that defendant companies’ use of Elvis Presley’s image and name were violations of his right to publicity and EPE’s trademark rights. Hence, the court denied all relief requested by EPE except for its request for injunctive relief against defendant companies.

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