## Facts

- Elvis Presley Enterprises, Inc. (EPE) owned and licensed numerous federally registered and common-law trademarks in “Elvis,” “Elvis Presley,” and related indicia, tied to major tourism and merchandising operations.
- Barry Capece and related business entities opened a Houston bar named “The Velvet Elvis” in 1991.
- Defendants sought federal registration of “The Velvet Elvis” for restaurant and tavern services; EPE did not oppose during the PTO publication period.
- The bar’s décor and marketing repeatedly invoked Elvis imagery and references (e.g., velvet Elvis paintings and slogans such as “Elvis has not left the building” and “The King Lives”).
- Some advertisements visually emphasized “Elvis” more prominently than “Velvet,” and certain promotions used Elvis-like figures and other Elvis-related cues.
- EPE alleged the mark and its manner of use suggested the bar was licensed, sponsored, affiliated with, or endorsed by EPE.

## Issues

1. Whether the Lanham Act likelihood-of-confusion analysis required evaluating “The Velvet Elvis” in the full context of defendants’ advertising and overall presentation, rather than isolating the service mark.
2. Whether parody, as invoked by defendants, precluded a finding of likelihood of confusion where consumers could still believe the use was sponsored or endorsed by the trademark owner.

## Decision

- The Fifth Circuit reversed the district court’s determination that the service mark “The Velvet Elvis” did not infringe EPE’s trademarks.
- The court held the district court erred by separating the mark from the advertising and by treating parody as effectively dispositive.
- The court concluded defendants’ use of the mark, in context, created a likelihood of confusion as to sponsorship, affiliation, or endorsement.
- The case was remanded with instructions to enter an injunction enjoining use of the infringing mark “The Velvet Elvis.”

## Legal Principles

- Likelihood of confusion must be assessed based on the mark “as used” in the marketplace, including advertising and other presentation that shapes consumer perception.
- The Lanham Act protects against confusion about sponsorship, affiliation, or endorsement, not only confusion about the physical source of goods or services.
- Parody is not a categorical defense to infringement; it is relevant only to the extent it reduces confusion by clearly signaling “not the original,” and it fails where the use plausibly implies authorization.
- A famous mark may receive protection against uses on related services within a reasonable zone of expansion, even absent registration in the defendant’s specific service category, if consumers are likely to assume licensing or sponsorship.

## Conclusion

The Fifth Circuit held that using “The Velvet Elvis” for a bar, coupled with Elvis-centered décor and advertising that emphasized “Elvis” and invoked Elvis slogans and imagery, was likely to confuse consumers about EPE’s sponsorship or endorsement; parody did not eliminate that likelihood, so injunctive relief was required.


Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998)