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Trademark
SUNY Buffalo Law School
Bartholomew, Mark

Introduction / Elvis Case 
Introduction – TOPICS TO BE COVERED IN CLASS
Distinctiveness – How strong of an identity is a mark to a particular business.
Functionality Doctrine – The intersection between trademark and patent law.
The use requirements – In the US use of the trademark is required for it to be of any value.
The likelihood of confusion test – when are consumers likely to be confused.
Dilution – if the power of a mark has become blurred
The right of trademark enforceability (right of publicity)
 
Why we have trademark?
It’s more efficient to the consumer – instead of going in every time to scrutinize. It is a relatively new argument. 
Trademarks are intellectual property and its not fair for someone else to profit. (Coca-Cola example).
We have to consider the rich meaning of trademark words. What does Coke mean to the consumers (the ardent Coke drinkers)?  
The NYPD and ENRON brands – meant something different 5 years ago than they today.
Trademarks are not plenary rights – Delta. You are not going to mistakenly buy a car wash when you go in to buy an airline tickets.
Why should Delta not be allowed to be the only company to use the word?
a.       First amendment infringement.
b.      People should be allowed to use the name to compare products.
c.       Minute Made example. It’s hard to communicate a product or taste without being able to use the word.
We have to protect the right of the consumers.
 
Elvis Presley Enterprises, Inc. v. Capece (5th Cir. 1998)
Facts: The court investigates whether there is a likelihood of confusion. The Court considers the following factors:
The type of trademark – The court thought the Elvis brand was a strong trademark but it did not go in favor of EPE. The court said that the strength of the brand does not cancel in favor of EPE because of parody. The term “Velvet Elvis” had a certain type of meaning to it (60’s retro-ness). The court thought Velvet Elvis was a parody.
Similarities of the service – the court found there was much difference between the two. They restaurant at Graceland was a more family oriented restaurant. The court found this went in favor of Capece because of parody
Similarity of the mark – the court found that the phrase Velvet Elvis was something different than Elvis. The court analyzed the whole term Velvet Elvis as against the term Elvis alone.
Intentions – Did Capece intend to trade off the Elvis brand? The court found they did not. The court found that because this was a parody (to make fun of the 60’s night club scene) there was no intent to trade off the Elvis brand.
Actual confusion – the most important factor – Courts are usually more impressed by studies that show confusion. The court found that there was no confusion. The two marks were co-existing for a while and there was no evidence of any actual confusion.
 
Holding: They could keep the inside the same, but some things did have to change because they were confusing: the advertisements. The parody did not cut in favor of Capece in terms of advertisements. There was some actual confusion.
 
OTHER NOTES: 
(1) Dilution – The lessening of the capacity of a famous mark. Was there blurring or tarnishing of the mark? 
(2) Tarnishment – When the mark becomes link to products of shabby quality.
(3) Blurring – the greatest show on earth v. the greatest car show on earth.
The court found that there was not enough evidence of the tarnishment by Capece.
(4) RIGHT OF PUBLICITY – A State claim. A legal rule: the defendant has appropriated another name and using it for their own purpose. The court found that this was the case on the advertisement. Certain phrases traded off of Elvis’ name or likeness violating his right of publicity.   
 
The 5th Circuit did not agree with the District Court on the infringement claim: Parody is only a valid defense to trademark infringement when you have to use it. Capece did not need to the use Elvis mark to have the club.
 
The United States is a use-based system – You must use the trademark to get the right. Most other countries are registration base – you need only register the trademark.
 
Types of marks:
(1) Trade marks
(2) Service marks
(3) Certification marks
(4) Collective marks
 
Four classes of trademark protection:
Generic
Descript

r satire, to promote social good (providing valuable service or information to the public).
  
 
DISTINCTIVENESS
 
Definition – the strength of a mark – sets in the consumers mind a certain association with a particular business or person that produced that mark.
 
Types of trademark
Arbitrary or fanciful – ex. Kodak – fanciful / Apple – arbitrary.
Suggestive – Coppertone – suggest rather than describe – requires a little imagination to think what the product is.
Descriptive – identify a characteristic or quality of the product ex. Aloe or vision center.
Generic – whole wheat
 
1 and 2 does not require secondary meaning; 3 requires secondary meaning.
1 and 2 are INHERENTLY DISTINCTIVE 3 can have ACQUIRED DISTINCTIVENESS 4 can never acquire distinctiveness.
 
 
Distinctiveness Spectrum & Secondary Meaning / Generic Terms
 
Descriptive v. Distinctive
 
Descriptive – the one you don’t really want to use. Description of product or service.
 
Descending order of terms
Arbitrary/ fanciful e.g. Orbitz, Expedia
Suggestive
Descriptive – must prove secondary meaning
Generic – not entitled to protection at all. They are per se never protected.
 
Zatarain’s v. Oak Grove
Facts: Z had a registered trademark in both fish-fry and chick-fry. Filed infringement claim against OG. OG counter-sued to have the trademark cancelled. 
Holding: The court held the CHICK FRI should be cancelled because it was merely descriptive. The FISH FRI mark was entitled to “fair use”.
They did not have CHICK FRI as long and did not spend as much on it. 
 
What evidence did the court look at to see if there is secondary meaning in CHICK-FRI?
Conducted surveys – 23%  
Advertising – 400k