Elvis Presley Enterprises, Inc.

Trademark Trial and Appeal Board

Apr 15, 1999

No. 74454035 (T.T.A.B. Apr. 15, 1999)

Hearing: Paper No. 020
April 22, 1998 EWH/cv
THIS DIPOSITION IS
CITABLE AS PRECEDENT OF THE TTAB
APRIL 15, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Elvis Presley Enterprises, Inc.
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Serial No. 74/454,035
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W. M. Webner of Sughrue, Mion, Zinn, Macpeak and Seas for
Elvis Presley Enterprises, Inc.
Esther Belenker, Trademark Examining Attorney, Law Office
103 (Kathy Erskine, Managing Attorney).
_______
Before Cissel, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Elvis Presley Enterprises, Inc. (applicant) seeks to
register as a trademark for cotton fabric “the likeness and
image of Elvis Presley.” To be clear, applicant’s alleged
Serial No. 74/454,035
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mark is not a word mark. Rather, applicant seeks to
register the likeness and image of Elvis Presley in all
possible manners of presentation without limitation as to
age, manner of dress or pose. (Applicant’s brief page 8).
On the drawing page of the application, there appears
simply the following: “the likeness and image of Elvis
Presley.”
The intent-to-use application was filed on November 3,
1993. On January 22, 1996 applicant submitted an amendment
to allege use of its mark as of December 1993 along with
various specimens purporting to show such use.
The Examining Attorney has refused registration based
on applicant's failure to comply with her requirement that
applicant submit an acceptable drawing of its mark. In her
"final" action refusing registration, the Examining
Attorney articulated the drawing requirement as follows:
The applicant must amend the drawing to show
a substantially exact representation of the
mark as intended to be used on or in
connection with the goods specified in the
application.
She went on to note that "an applicant may apply to
register only one mark in each application" and that, by
means of its current "drawing," applicant "… has
[impermissibly] attempted to claim numerous marks in one
application."
Serial No. 74/454,035
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She further explained her position in her reply to the
applicant’s request for reconsideration of her "final"
action. There, she stated that
… the applicant has attempted to register a
concept, the idea or aura of Elvis Presley.
The Trademark Act does not provide for
registration of an idea. … The words
listed in the drawing describe a concept or
idea about Elvis Presley, but they do not
show a trademark.
In her brief at pages 6-7, the Examining Attorney
explained further that, without a "drawing [conveying] an
accurate representation of the mark sought to be
registered," members of the public and examining attorneys
will be unable to ascertain what mark(s) applicant claims
rights in, or obtains rights in.
Trademark Rule 2.51(a) requires that a trademark
application have a drawing which “shall be a substantially
exact representation of the mark” as used on or in
connection with the goods (use based applications) or to be
used on or in connection with the goods (intent-to-use
applications). Trademark Rule 2.51(c) states that “the
drawing of a mark may be dispensed with in the case of a
mark not capable of representation by a drawing, but in any
such case the application must contain an adequate
description of the mark.”
Serial No. 74/454,035
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It is the contention of the Examining Attorney that
the exception found in Trademark Rule 2.51(c) applies only
to sound and scent marks. (Examining Attorney’s brief page
7). On the other hand, applicant contends that “it is a
certainty that every [possible] pose of Elvis Presley
cannot be drawn for one application. Therefore, the
‘incapable’ requirement of Rule 2.51(c) is met.”
(Applicant’s brief page 8).
We certainly share the view of applicant that every
possible pose of Elvis Presley cannot be shown in one
drawing. However, even assuming that the incapability
requirement of Trademark Rule 2.51(c) is met in this
particular case, “the application must [still] contain an
adequate description of the mark.” In other words, all
trademark applications must contain either (1) a “drawing
of the trademark [which] shall be a substantially exact
representation of the mark,” or (2) “an adequate
description of the mark.” As the Examining Attorney has
argued, in a single trademark application an applicant may
not attempt to register two or more marks. In re Audi, 197
USPQ 649, 651 (TTAB 1977).
It is the contention of applicant that it is seeking
to register but one mark, namely, the likeness and image of
Elvis Presley. Of course, applicant concedes that there
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are vast numbers of different “poses” of Elvis Presley.
However, it is applicant’s contention that all of these
vast numbers of poses of Elvis Presley nevertheless
function as a single trademark, as articulated by applicant
in the following passage from pages eight and nine of its
brief (emphasis added):
It is the miracle of human comprehension that
people can perceive many poses of Elvis
Presley; the “young Elvis” as he looked in the
1950’s, the “older Elvis” as he looked in the
1970’s, or Elvis Presley dressed in his famous
jump suit stage attire of the ‘70’s or the
charcoal and pink suits of the 1950’s and know
that it is but one singular person – not many.
It does not make a difference if the pose is
of the “gyrating pelvis” Elvis Presley or of
him holding the microphone close to his mouth
in a ballad singing manner. However dressed,
however posed and at whatever age he is
portrayed there is no doubt but that the
likeness and image is of Elvis Presley and of
no other person. Each and all of these poses
of Elvis Presley, when used by [applicant] on
its products or in connection with its
services, serve as [applicant’s] trademark.
We disagree. The likeness and image of an infant
Elvis Presley, if it functions as a trademark or service
mark at all, is vastly different from the likeness and
image of Elvis Presley in 1958, not to mention 1977.
Likewise, the likeness and image of Elvis Presley dressed
in an Army uniform with short hair is clearly different
from that of Elvis Presley in jump suit stage attire with
long hair and wide sideburns. Were applicant to obtain a
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registration covering every likeness and image of Elvis
Presley from his birth until his death, then applicant
would be in the position to prevent others from using or
registering the specific images of other individuals (real
or fictional) which resemble one of the thousands, if not
millions, of vastly different photographs, film frames or
video frames depicting Elvis Presley. This would be true
even for a particular photograph, film frame or video frame
which, while constituting an actual picture of Elvis
Presley, nevertheless has very little resemblance to Mr.
Presley. We are all quite aware of pictures of ourselves
or others that, for whatever reasons, are simply not
accurate depictions of ourselves or others.
In case this Board may appear to be overreacting, we
are attaching hereto photocopies of the eight (8) different
photographs which applicant submitted as specimens of use.
These eight photographs contain literally dozens of
different depictions of Elvis Presley at different ages and
in different types of apparel. These pictures are worth a
thousand words in conveying just how different Mr. Presley,
like any other individual, varied in his appearance from
his late teens to his early forties. Of course, as
previously noted, these variances would be even greater if
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we were to take into account depictions of Mr. Presley as
an infant or as a child, as applicant would have us do.
This is not the first time that an attempt has been
made to claim that the likeness and image of Elvis Presley
in general serves as a mark. Such an attempt was rejected
in the past, and we, like the Examining Attorney, reject it
now. See Estate of Elvis Presley v. Russen, 513 F.Supp.
1339, 211 USPQ 415, 439 (D.N.J. 1981)(“The plaintiff
asserts that the likeness and image of Elvis Presley serves
as a service mark; however, the evidence does not support
such a broad proposition. Rather, the record only supports
a conclusion that a picture or illustration of Elvis
Presley dressed in one of his characteristic jumpsuits and
holding a microphone in a singing pose is likely to be
found to function as a service mark. This particular image
(hereinafter referred to as the ‘Elvis Pose’) has appeared
in promotional and advertising material for concerts and on
record albums.”) (emphasis added).
The holding of Estate of Elvis Presley v. Russen was
endorsed by the United States Court of Appeals for the
Second Circuit in Pirone v. MacMillan, 894 F.2d 579, 13
USPQ2d 1799 (2d Cir. 1990). The Court had the following to
say with regard to an attempt to claim trademark rights in
Serial No. 74/454,035
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all likenesses and images of a particular individual (13
USPQ2d at 1801, emphasis added):
Different photographs of the same
person may be markedly dissimilar.
Thus a photograph of a human being,
unlike a portrait of a fanciful cartoon
character, is not inherently
“distinctive” in the trademark sense of
tending to indicate origin. … Under
some circumstances, a photograph of a
person may be a valid trademark – if,
for example, a particular photograph
was consistently used on specific
goods. [Plaintiff], however, asserts
rights in every photograph of [Babe]
Ruth.
This sweeping contention resembles that
rejected in Estate of Elvis Presley v.
Russen, 513 F.Supp. 1339 (D.N.J. 1981).
The estate of the entertainer Elvis
Presley argued that his “image and
likeness” was a valid mark. The
District of New Jersey rejected the
claim as too broad. … However, the
[district] court went on to note that a
particular image of Presley could be a
valid mark. …
Decision: The refusal to register is affirmed.
R. F. Cissel
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board