Select Page

SUNY Buffalo Law School
Bartholomew, Mark

Foundations and Purposes of Trademark & Unfair Competition Law
Trademarks Ubiquity

Has Protection gone too far?

Strength of Marks?

Doctrine of Functionality

Use and Registration requirements


Dilution law

Right of publicity

Hypothetical on what if he had made coke in his bathtub. Consumers aren’t getting what they paid for. He is free riding off the good name of Coke. Its inefficient.

Protecting Consumers
The more important reason
Not what paid for. Inefficient.

Protecting Businesses
Of lesser importance

The power of the brand name of coke. Coke users and pepsi users. How they view the brand. Enron the changing image of a brand. NYPD.

Adam Smith’s view on trademark law. We assume he wouldn’t want strong trademark law.
Why is this bad? Dilution.

Can’t trademark a functional word. Such as “cola” itself.

Delta can be used for multiple products but not for products in the same category.

Minute Maid. Trademarks————-They are very efficient.

Velvet Elvis Case



Velvet Elvis
Bar parodying the era of Elvis
Serving appetizers to complete entres
For young adults
Nude women all over the place
Hard alcohol and cigars

EPE Trust
T-Shirts, Merchandising, Copyrights,

Bar décor non infringing
Advertisements infringing

They compete in different areas. This restaurant is not within EPE’s target market.

Factors of likelihood of consusion
Degree of similarity of the marks
Similarity of goods /services
Type/ Strength of the mark
Marketing. Selling channels
Evidence of actual confusion

Four causes of action in this case
Right of publicity
Likelihood of confusion

Type/Strength of the mark
Degree of similarity of the mark
Velvet Elvis meant something different from Elvis. Velvet Elvis commemorates and mocks an era in which that art form was popular. Putting something on velvet suggests cheesiness. Do people instantly realize there is a joke when something is put on velvet? Brittney Spears Velvet Painting… no because it doesn’t have the history attached.

Strength of mark- “Velvet Elvis” not the same as “Elvis”

Similarity of goods and services- EPE claims it intends to expand, court didn’t buy it

Intent – did defendant intend to infringe? They intended to parody

Actual confusion- the most important factor in reality. Defense produced four witnesses who were initially confused.

Court splits advertisement and deals with that separately from the bar décor
Advertisement displayed “ELVIS” more prominently than “velvet”

Didn’t get the joke when you saw the advertisements so its confusing.


No likelihood of confushion in a dilution claim

There are two types of dilution
Blurring and tarnishment


Where does the authority come from to pass laws such as trademark laws? The constitution

B. Other IP Types
IP is more porous than real property more other people can use it your stranglehold isn’t as strong

Low Threshold
Creating something
No registration requirements
Life + 70 years

New useful non-obvious
High threshold
PTO registration required
20 years

Symbols and devices which are capable of identifying goods
No registration requirements

III Distinctiveness
A. The Spectrum
B. Secondary Meaning

Unfair competition
Incorporates trademark infringement
INS Case is an example
300 pound gorilla when trademark infringement just isn’t enough
Also includes:
False advertising
False designation of origin

We are more of a free market economy so we tolerate more competition and things such as comparative advertising.

Limited by:
Cant run around copyright law

Registered trademarks
Trademark infringement

Unregistered trademarks
Sometimes refered to as an unfair competition case

Restatement third of unfair competition (1995)