Owners of the Elvis Trademark Have Jumped Into Another Fight
Elvis Presley has found his way into the headlines again over four decades after his death. Many fans are excited about the icon’s new biopic — directed by Baz Luhrmann — set to release on June 24. Unfortunately, that’s not what has driven much of the current publicity. Just months after the film’s trailer release, the owner of the Elvis trademark and other intellectual property has gone on a legal frenzy.
It’s only been a few weeks since that owner — Authentic Brands Group (ABG) — sent trademark cease and desist letters to various Las Vegas wedding chapels demanding they end their Elvis-themed weddings. ABG has also filed a Notice of Opposition against WBM, LLC this week.
Elvis Trademark Opposition Filed a Week Before New Biopic
WBM filed a trademark application for “Elvis Smart” back in December 2020. It normally wouldn’t take so long for an application to publish in the Official Gazette, but there was a lot of back and forth between the U.S. Patent and Trademark Office (USPTO) and the company. In fact, the trademark was considered abandoned at the beginning of 2022 before being revived.
After requesting an extension to file, ABG finally submitted a Notice of Opposition on June 14. This was a mere 10 days prior to the release of the new biopic film Elvis. ABG claims that use of “Elvis Smart” — which WBM said would be used on a variety of toilet paper and paper towel products — would violate their intellectual property rights.
To be more specific, ABG states that use of “Elvis Smart” by WBM would cause a likelihood of confusion, trademark dilution, and create a false suggestion of connection to the King himself. If WBM decides to fight this opposition — which may be likely considering they’ve sought the trademark for nearly two years at this point — it will only add to ABG’s legal fights.
ABG Already Putting Pressure on Elvis Wedding Venues
When Authentic Brands Group filed their opposition notice against WBM, it had been less than a month since they sent cease and desist orders to several Las Vegas chapels. In letters dated May 19, the company demanded that Elvis-themed wedding chapels across the city cease their services. Having to end the use of Elvis impersonators in weddings could destroy several businesses.
The lawyers representing some of these chapels told the owners to simply continue business as usual. They don’t seem very concerned about the demand from ABG, and this could be for several reasons. For one, the company has owned the rights to Elvis intellectual property since 2013. This means they waited nearly a decade to claim any rights against Las Vegas chapels using the King’s likeness. So this sets up a potential laches defense.
This might also be due to the iconic status Elvis has attained. Courts could very well see use of his likeness as a protected form of artistic expression. This has led many to claim that the actions of ABG are little more than “trademark trolling” in an attempt to have chapels pay a licensing fee rather than actually shut down. With several chapels choosing to continue operation, though, the next part of this saga depends on ABG’s response.
What Happens Next?
There’s little denying that Authentic Brands Group currently has a full plate. Getting Las Vegas chapels to cease Elvis-themed weddings will certainly be a tall order. Due to the King of Rock’s iconic status, use of his likeness as a form of artistic expression might just be protected under the First Amendment. And due to the publicity of ABG’s actions, even small chapels may understand this and refuse to pay a licensing fee.
As to the trademark opposition filed against WBM, the owner of Elvis intellectual property may have an easier task ahead. The Trademark Trial and Appeal Board could choose to accept their claims that using “Elvis Smart” on a product constitutes trademark infringement. As for now, we’ll have to wait to see how WBM responds. Barring any extensions, the company has until July 24 to file an answer.
With legal battles emerging on numerous fronts, though, it may be Authentic Brands Group that ends up “all shook up.”