Author:Jeffrey Lehman, Shirelle Phelps

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Distinctive symbols of authenticity through which the products of particular manufacturers or the salable commodities of particular merchants can be distinguished from those of others.

A trademark is a device, word or combination of words, or symbol that indicates the source or ownership of a product or service. A trademark can be a name, such as Adidas, or a symbol, such as McDonald's golden arches, or it can be a combination of the two, such as when the NIKE name is written with the "swoosh" symbol beneath it. In very limited cases, a shape or even a distinctive color can become a trademark.

People rely on trademarks to make informed decisions about the products they buy. A trademark acts as a guarantee of the quality and origin of a particular good. A competing manufacturer may not use another company's trademark. The owner of a trademark may challenge any use of the mark that infringes upon the owner's rights.

The presence of trademark protection for the name or logo of a company or product is often indicated by the small symbol of an R in a circle placed near the trademark. The R means that the mark is a registered trademark and is a warning that the law prevents unauthorized use of it. A party may indicate that it is claiming rights to a particular mark by displaying a TM rather than an R symbol. Marks bearing the TM symbol are not registered, but the presence of the symbol shows an intent to register.

Origins and Development of Trademark Law

Trademark law in the United States is governed by the Trademark Act of 1946, also known

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as the LANHAM ACT (15 U.S.C.A. § 1051 et seq). The Lanham Act defines trademarks as including words, names, symbols, or combinations thereof that a person uses or intends to use in commerce to distinguish his or her goods from those made or sold by another. Potential trademarks are categorized by the functions they perform. Within trademark law are several specialized terms used to categorize marks that may be subject to protection. The categories are form, mode of use, and, most commonly, strength. The four subcategories of strength are generic, descriptive, suggestive, and arbitrary or fanciful.

A generic name is the common name for a product and will never be considered a trademark. Shoe, ball, hat, and lightbulb are all generic product names. Some marks that do not begin as generic may later become generic if the public adopts the mark as the general name for that product. Examples of marks that were not originally generic but later became so are cellophane and aspirin. Generic marks are not "strong" because they are not distinctive. To give trademark status to the generic or common name of a product would prevent all other manufacturers of the product from identifying it. To prevent that from occurring, granting trademark status to the generic name of a product is prohibited.

In the King's Name

Although Elvis Presley died in 1977, his name and likeness have been trademarked by Elvis Presley Enterprises (EPE). EPE earns millions of dollars each year through a licensing program that grants licensees the right to manufacture and sell Elvis Presley merchandise worldwide. EPE also operates two restaurants and an ice cream parlor at Graceland, the Elvis Presley home in Memphis, Tennessee, which Presley fans consider to be a shrine to the king of rock and roll.

In 1995 EPE filed suit in federal court, alleging that a Houston, Texas, nightclub operating under the name "The Velvet Elvis" infringed on EPE's trademarks (Elvis Presley Enterprises, Inc. v. Capece, 950 F. Supp. 783 [S.D. Texas 1996]). The name of the nightclub comes from a black velvet painting of Presley that hangs in the back lounge of the bar. Newspaper advertisements for the club depicted images and likenesses of Presley and made explicit references to the singer, including "The King Lives," "Viva la Elvis," and "Elvis has notleft the building."

The court ruled that the name "The Velvet Elvis" did not create the likelihood of confusion as to the "Elvis" trademarks held by EPE. The court agreed with the club owner that the bar was meant to PARODY 1960s popular culture. Replete with lava lamps, beaded curtains, vinyl furniture, and black velvet nude paintings, the bar was a humorous jab at the culture that created the Presley myth. Even if EPE operated its own "Elvis" nightclub, the Houston bar would not create confusion as to the EPE trademarks. The court noted that the typical customers of The Velvet Elvis were young professionals ranging in age from their early twenties to their late thirties. The majority of Presley fans were middle-aged white women.

The court also ruled, however, that the use of Presley's name and likeness in advertisements infringed on the EPE trademarks. The advertisements did not indicate that the nightclub was a parody of 1960s popular culture, and therefore they created the likelihood of confusion as to the sponsorship of the nightclub.

The court ordered the owner of The Velvet Elvis not to display in his advertisements the image of Elvis or make direct references to his identity as a celebrity or to emphasize the word Elvisin the name The Velvet Elvis. Apart from this remedy, the court dismissed all other relief sought by EPE. The nightclub could continue, in the words found on its menu...

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