Elvis Presley Enterprises, Inc.v.Paul M. Driscoll

Trademark Trial and Appeal Board

Dec 8, 1997

No. 91097601 (T.T.A.B. Dec. 8, 1997)

Paper No. 9
CEW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB DEC 9, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Elvis Presley Enterprises, Inc.
v.
Paul M. Driscoll
d.b.a.
Paul Driscoll Magical
_______
Opposition No. 97,601
to application Serial No. 74/524,586
filed on May 13, 1994
_______
W. Mack Webner of Sughrue, Mion, Zinn, MacPeak & Seas for
opposer
John S. Egbert of Harrison & Egbert for applicant
_______
Before Seeherman, Hanak and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Elvis Presley Enterprises, Inc. filed its opposition to
the application of Paul M. Driscoll, d.b.a. Paul Driscoll
Magical, to register the mark VELVIS for “entertainment in
the nature of magic and comedy shows.”1

1 Application Serial No. 74/524,586, filed May 13, 1994, in
International Class 41, based upon an allegation of a bona fide
intention to use the mark in commerce in connection with the identified
services.
Opposition No. 97,601
2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s services, so
resembles opposer’s previously used and registered word and
design marks, ELVIS and ELVIS PRESLEY, as indicated below,
as to be likely to cause confusion under Section 2(d) of the
Trademark Act.
Opposer asserts, further, that it is a corporation
created by the Estate and Trust of Elvis A. Presley, who is
deceased; that it is the owner of the publicity rights in
the name, likeness and image of Elvis Presley and the owner
of the marks ELVIS and ELVIS PRESLEY; that Elvis Presley was
a singer, movie actor, night club entertainer and concert
performer who was and remains internationally famous as an
entertainer, with one of the most recognized names in the
United States; and that the first name ELVIS has come to
mean only Elvis Presley when used on or in connection with
entertainment services.
Opposer’s pleaded registrations are for the marks,
ELVIS,2 ELVIS PRESLEY,3 and the design marks shown below:

2 Issued originally to the Estate of Elvis Presley are Registration No.
1,265,579, issued January 31, 1984, for “prerecorded audio magnetic
tapes and phonograph albums” in International Class 9; and Registration
No. 1,267,105, issued February 14, 1984, for “prints and publications -
namely, posters and record album jackets” in International Class 16; .
The record in each of these registrations shows that opposer is the
owner, by assignment from the original registrant, of the registration.
Issued originally to opposer are Registration No. 1,327,990, issued
April 2, 1985, for “metal key rings with attached tags” in International
Class 6; and Registration No. 1,329,269, issued April 9, 1985, for
“plastic, stainless steel and/or sterling silver collector’s spoons” in
International Class 8. Sections 8 and 15 affidavits have been filed and
accepted and acknowledged, respectively, in all of these registrations.
Opposition No. 97,601
3
4
5

3 Registration No. 1,329,791, issued April 9, 1985, for “dolls” in
International Class 28 [Sections 8 and 15 affidavits accepted and
acknowledged, respectively]; Registration No. 1,340,617, issued June 11,
1985, for “musical instruments - namely, guitars” in International Class
15 [Sections 8 and 15 affidavits accepted and acknowledged,
respectively]; Registration No. 1,342,551, issued June 18, 1985, for
“printed matter - namely, photo albums, post cards, note pads; and
printed publications - namely, paper doll books, coloring books, and
coin books” in International Class 16 [Sections 8 and 15 affidavits
accepted and acknowledged, respectively]; Registration No. 1,674,265,
issued February 4, 1992, for “beverageware; namely, carafes, mugs, shot
glasses, and tumblers” in International Class 21; Registration No.
1,677,532, issued March 3, 1992, for “jewelry” in International Class
14; Registration No. 1,677,561, issued March 3, 1992, for “prints and
publications; namely, posters” in International Class 16; Registration
No. 1,677,378, issued March 3, 1992, for “magnetic tapes and phonograph
records” in Class 9; and Registration No. 1,692,862, issued June 9,
1992, for “clocks and watches” in International Class 14. Opposer has
also pleaded Registration No. 1,597,045, issued May 22, 1990, for
“perfume” in International Class 3. However, as PTO records indicate
that this registration has been canceled under Section 8, we do not
consider this registration as part of the basis for opposer’s claims
herein.
4 Registration No. 1,229,590, issued March 8, 1983, to the Estate of
Elvis Presley, for “jewelry” in International Class 14. The record
shows that opposer is the owner, by assignment from the original
registrant, of this registration. Sections 8 and 15 affidavits accepted
and acknowledged, respectively. The registration certificate includes
the statement “The image or likeness shown on the drawing is that of
Elvis Presley, a deceased individual.”
5 Registration No. 1,732,372, issued November 17, 1992, for “cologne” in
International Class 3. The registration certificate includes the
statement “The mark consists of a stylized representation of the name
‘ELVIS’.”
Opposition No. 97,601
4
Applicant, in its answer, denied the salient
allegations of the likelihood of confusion claim and
asserted that applicant’s mark is not confusingly similar to
opposer’s marks; that applicant’s services would not be
considered to be under the sponsorship of or related to
opposer; and that applicant’s services are provided in
different channels of trade from opposer’s goods.
The Record
The record consists of the pleadings; the file of the
involved application; opposer’s first request for
admissions,6 made of record by opposer’s notice of reliance;
and the testimony deposition of Carol Butler, opposer’s
worldwide director of licensing, with accompanying exhibits.
Applicant took no testimony and submitted no evidence. Only
opposer filed a brief on the case.
The Parties

6 Opposer’s requested admissions are deemed to be admitted by applicant
since applicant neither responded to opposer’s request nor objected
thereto within thirty days after the date of service of opposer’s
request for admissions. See, FRCP 36(a) and Trademark Trial and Appeal
Board Manual of Procedure (TBMP), Section 411.01.
Opposition No. 97,601
5
Through the testimony of Carol Butler, opposer’s
worldwide director of licensing, opposer has established
that it was created by the estate and trust of Elvis
Presley, the deceased entertainer, and had assigned to it
the exclusive rights to the name, image and likeness of
Elvis Presley for the purpose of licensing and conducting
business using Mr. Presley’s name, likeness and image. Ms.
Butler testified that Elvis Presley was a singer; that more
of his recordings have been sold than of any other singer7;
and that, in addition to having been a singer, Elvis Presley
was a performer, as he made several motion pictures and
performed live on stage. Ms. Butler stated that opposer
licenses the manufacture of a variety of products upon which
its pleaded marks appear and which it sells at Graceland;
that opposer has licensed its pleaded marks in connection
with entertainment services; that when opposer licenses the
use of its pleaded marks in connection with goods and
services, it seeks to obtain a royalty for such use; and
that opposer has not licensed or otherwise approved of
applicant’s use of the applied-for mark.
As indicated herein, applicant is deemed to have
admitted, in pertinent part, that he offers entertainment
services in which he dresses in clothing and adopts

7 Further, we believe that Elvis Presley’s reputation as an entertainer
is so widespread in the United States that we may take notice of that
fact.
Opposition No. 97,601
6
mannerisms imitative of Elvis Presley and makes reference
therein to Elvis Presley; that he adopted the name VELVIS,
which is not his name or the name of any family member, to
identify his stage persona and that he intends for his stage
persona and his name to suggest the persona and name of
Elvis Presley; and that members of applicant’s audiences
have, in fact, commented that the name VELVIS and
applicant’s performance are reminiscent of Elvis Presley.
Analysis
Inasmuch as certified copies of opposer’s registrations
are of record, there is no issue with respect to opposer’s
priority in relation to the goods identified therein. King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). While opposer has testified
that it licenses use of the pleaded marks in connection with
entertainment services, opposer has presented no evidence
with respect to its priority of use in connection with such
services and no conclusion can be drawn in connection
therewith.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
Opposition No. 97,601
7
Turning, first, to the marks, we find that applicant’s
mark, VELVIS, is visually similar to a opposer’s mark,
ELVIS, with only the initial letter, “V,” distinguishing the
two marks; that VELVIS is phonetically similar to ELVIS and,
in fact, rhymes with ELVIS; that the connotation of VELVIS
is of a minor variation of the name, ELVIS; and that the
commercial impressions of the two marks are significantly
similar. In view of the evidence that the renowned
entertainer, Elvis Presley, is often referred to, simply, as
Elvis, we find that the commercial impressions of
applicant’s mark, VELVIS, and opposer’s mark, ELVIS PRESLEY,
are, likewise, significantly similar.
With respect to the goods and services of the parties,
the record establishes that opposer’s business is,
essentially, promoting the persona and name of Elvis Presley
as a singer and entertainer through the marketing of his
name and likeness in connection with a variety of goods and
services. In this regard, opposer’s pleaded marks are
registered for a wide variety of goods. Further, opposer’s
mark ELVIS is registered for “prerecorded audio magnetic
tapes and phonograph albums” and its mark ELVIS PRESLEY is
registered for “magnetic tapes and phonograph records.” The
goods identified in these two registrations encompass live
performances so recorded, which would include singing and
comedy performances. Thus, we find that applicant’s
Opposition No. 97,601
8
entertainment services are closely related to the goods
identified in these two registrations owned by opposer. We
find, further, that in view of the breadth of goods in
connection with which opposer’s marks ELVIS and ELVIS
PRESLEY are registered, along with the evidence that opposer
licenses the use of its marks in connection with
entertainment services, when applicant’s mark is used in
connection with the services herein, confusion as to the
source or sponsorship of applicant’s services is likely.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of opposer’s marks
ELVIS and ELVIS PRESLEY and applicant’s mark VELVIS, their
contemporaneous use on the goods and services involved in
this case is likely to cause confusion as to the source or
sponsorship of such goods and services.
Decision: The opposition is sustained.
E. J. Seeherman
E. W. Hanak
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board