Couldn’t be more pleased and thankful to collaborate and share insights on the timely topic of Trademarks, Parody, and the First Amendment, with esteemed Professor of Law Christine Farley during our upcoming Strafford webinar on Tuesday July 25, 2023, at 1 PM ET, check out the details here, hope you can join us!
Time certainly flies while you’re having fun, and for me, the past two decades of serving as an editor and author for The IP Book and also as a planner for the Midwest IP Institute is no exception:
In the 2022 IP Book you’ll find a lot of terrific content, including Tiffany and Molly‘s Trademark Modernization Act Updates, and Draeke‘s Trademark Failure to Function Update.
The IP Book is available for purchase here, all proceeds go to Minnesota Continuing Legal Education, learn and enjoy at the same time.
When you hear “PURPLE RAIN,” what’s the first thing that comes to your mind?
An iconic album …
A genre-defining film …
The late musical genius from Minnesota…
In a precedential decision, NPG Records, LLC and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, 2022 USPQ2d 770 (TTAB 2022) (link), the Trademark Trial & Appeal Board (the Board) granted the Prince Estate’s[i] motion for partial summary judgment against a third-party application for PURPLE RAIN.
Here’s a thumbnail sketch of the case:
JHO Intellectual Property Holdings LLC[ii] (Applicant) sought to register the mark PURPLE RAIN on the Principal Register in standard characters for “Dietary supplement drink mixes; Dietary supplemental drinks; Dietary and nutritional supplements; Liquid nutritional supplement; Nutritional supplement energy bars; Nutritional supplements; Nutritional and dietary supplements formed and packaged as bars; Powdered nutritional supplement drink mix” in International Class 5, and “Energy drinks; Isotonic drinks; Non-alcoholic drinks, namely, energy shots; Sports drinks” in International Class 32.
NPG Records, LLC and Paisley Park Enterprises, LLC (collectively, Opposers)[iii] own a registration and five pending applications (three of which matured to registration at the time of the Board’s decision) for the mark PURPLE RAIN, and associated common law rights, for goods and services in International Classes 9, 16, and 41.
Opposers filed an opposition proceeding against Applicant’s PURPLE RAIN asserting: (1) likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C.§ 1052(d); (2) dilution by blurring under Trademark Act Section 43(c), 15 U.S.C. § 1125(c); and (3) false suggestion of a connection with Prince under Trademark Act Section 2(a), 15 U.S.C. § 1052(a).
The Board’s decision turned solely on Opposers’ claim of false suggestion of a connection with Prince under Trademark Act Section 2(a).
To succeed in their summary judgement motion, Opposers had to establish there was no genuine dispute that:
Factor 1: Close Approximation of Name or Identity
Opposes’ Section 2(a) claim requires proof that consumers view PURPLE RAIN so closely with Prince that they recognize it as Prince’s identity persona. The Board agreed that Opposers’ evidence established that PURPLE RAIN is widely recognized as synonymous with Prince. The Board affirmed:
“[a] term may be considered the identity of a person even if his or her name or likeness is not used. All that is required is that the mark sought to be registered would be recognized by consumers as a reference to a specific person or individual (in this case, Prince).”
Factor 2: Mark Points Uniquely and Unmistakably to Prince
Under the second factor of the Section 2(a) test, Opposers must demonstrate an invasion of one’s ‘persona,’ i.e., the mark as used by Applicant, must point uniquely to Prince.” Citing the “plentiful” evidence of record, the Board found PURPLE RAIN points uniquely and unmistakably to Prince. The Board gave weight to Opposers’ survey evidence, which showed that a significant percentage of the general public (66.3%) recognizes PURPLE RAIN as a reference to Prince.
The Board pointed out that although “it is not [Applicant’s] burden to explain why it adopted its mark, [its] choice not to do so means we do not have any explanation which might show that the term has another significance when used for [Applicant’s goods].”
Factor 3: Opposers’ Connection with Applicant’s Goods
Undisputed that Prince was not connected with Applicant’s activities or goods.
Factor 4: Presumption of a Connection Due to Sufficient Fame and Reputation
Under the fourth factor of the Section 2(a) test, the person or identity to whom the subject mark refers must be sufficiently famous, or of such reputation, that relevant consumers of the applicant’s goods would presume that the applicant has a connection with that person. Finding in favor of Opposers, the Board held:
“it is commonplace for performers and owners of well-known marks to expand their product lines, in order to incorporate a diverse set of goods to capitalize on the renown of their names and brands … If the applicant’s goods are of a type that consumers would associate … in some fashion with a sufficiently famous person or institution, then we may infer that purchasers of the goods or services would be misled into making a false connection with the named party.”
Aftermath
In response to the Board’s holding, Bang Energy CEO Jack Owoc told Billboard that he was “a big fan” of the iconic artist and would take the dispute no further: Owoc states, “We greatly respect Prince and his estate and will not ‘rain’ on their parade. Maybe we can negotiate a deal in the future that is mutually beneficial to both parties.”
Author’s Observations
The Board’s recognition that it is commonplace for celebrities to expand their product lines sets critical legal precedent and is in keeping with real world market trends. Celebrities and their estates will look to this case as a blueprint in preventing interlopers from trading on their goodwill and celebrity status whether or not the interloper’s goods or services are competitive with or offered by the celebrity. Oppositions like this also play an important role in protecting and enhancing the value of celebrity brands vis-à-vis encouraging third parties to seek licenses rather than roll the dice with an unauthorized use of a celebrity persona.
—
Disclosure: The author helped brief this case on behalf of the Prince Estate. The author would like to congratulate his former colleagues Laura L. Myers and Tracy L. Deutmeyer on their successful result.
[i] Opposer NPG Records, Inc., an original opposer, was converted from a corporation to a limited liability company and changed its name to NPG Records, LLC. Opposers filed a motion to substitute Paisley Park Enterprises, LLC (“Paisley Park”) for Comerica Bank & Trust, N.A. (“Comerica”) (as representative of the Estate of Prince Rogers Nelson) in light of an assignment of Mr. Nelson’s rights of publicity from the Estate to Paisley Park.
[ii] You may be familiar with JHO’s line of BANG energy drinks.
[iii] Paisley Park opposed, claiming to own rights in the name, image and likeness of Prince. NPG opposed, claiming to own registered and common law rights in the trademark PURPLE RAIN.
Over the weekend, Seth Godin shared some wisdom that resonated, In or out:
Often overlooked is how uncomfortable it is to sit on a fence.
Get in or get out. Wasting time sitting on the fence wastes far more time and emotion than you’d expend committing to something.
I’d add to that sentiment, when you’re in the business of providing professional services, it’s a disservice to sit on the fence, not pick a side, or take a position.
In a similar vein, here are some illustrations, shared over the last dozen years:
J.D. Waffler: The Art of Taking a Position
Yes, No, and the Ever Confusing Maybe . . .
What’s 50/50 Legal Advice Worth to You?
To sum it up, flipping the coin shouldn’t be an option, when someone is paying for your honest opinion on a subject that you purport to know something about.
The really big news that commanded attention was back in July 2020, when the NFL franchise near Washington, D.C. announced it would be “retiring the R*dskins name and logo.” You may recall this gem: NEVER Means Forever, Until it Doesn’t.
Honestly, after two seasons of the team using the generic Washington Football Team name, I had wondered whether Daniel Snyder had given up on brands and if a new name ever would come, but today there is some news to report.
As NPR has reported today: The Washington Football Team’s New Name is the Washington Commanders. Apparently the Today show broke the story.
The team didn’t break any speed records, however, as nearly thirteen years ago, I made this observation: Re-Branding Madness in Washington Overlooks Obvious.
While Daniel Snyder may not have given up on branding, stay tuned as to whether he has given up on trademarks, as of today, I could only find two federal applications on file at the USPTO containing WASHINGTON and COMMANDERS.
Neither Washington Wolf Commanders nor Washington Space Commanders appear to be associated with the team.
Over the past dozen years, we’ve been admiring Rapala’s annual creative billboard campaign that continues to maintain the same eye-catching look and feel.
Love the white canvas, the red stylized Rapala brand name, the Original Floating lure, and a creative and often humorous attention-getting term or phrase in black ink, sandwiched in between (and hooked by) the lure and the brand name:
In case you’re wondering, I’ve listed my 2021 favorites in order above, with “Smooth whopperator” receiving top marks, presumably blending an eclectic nod to this song and catching a “whopper” (or telling a “whopper” as anglers are known to do). Also could be a reference to that large burger brand.
But probably not this beer brand, based on this candy brand? And hopefully not to be confused with this registered Whopper Plopper® brand lure.
Which Rapala billboard is catching your attention in 2021?
We can all think of and relive a multitude of reasons over the past year to embrace Dean’s timely #Flush2020 billboard ad as we prepare to ring in the New Year.
We also can look for silver linings before we bid farewell to 2020, some glimmers of hope and thankful reflections to provide fuel for 2021, here are some of mine:
What are you thankful for about 2020 that gives you hope toward a better 2021?
Hotels, Ice Cream, and Shoes as Canvases for Great Brands
Seth Godin has written about how Nike is a great brand because we can imagine what a Nike hotel would look like.
So, let me ask a slightly weirder question: If Nike were an ice cream flavor, what would it taste like?
My guess would be something like a lemon zest sorbet, perhaps. (I’ll look for your best guess in the comments.)
Speaking of ice cream, Ben & Jerry’s is another great brand, like Nike.
Maybe you have a favorite Ben & Jerry’s flavor. Maybe it’s Chunky Monkey? My favorite is currently Half Baked:
Although I have to say, the recent collaboration with Netflix, called Netflix & Chill’d, is pretty good too, and not a bad show of brand strength by Netflix:
(For the record, the ice cream gods have decided that Netflix tastes like Peanut Butter Ice Cream with Sweet & Salty Pretzel Swirls & Fudge Brownies).
Based on your experience with the Ben & Jerry’s brand, I bet you can even imagine what a Ben & Jerry’s hotel would look like.
How about another test of brand strength?
What if Ben & Jerry’s were a basketball shoe? What would it look like?
No guessing required this time: I present to you, the Chunky Dunky:
“The Chunky Dunky” is a limited run collaboration between Nike and Ben & Jerry’s that applies Ben & Jerry’s iconic trade dress to the iconic Nike SB Dunk Low shoe silhouette, named using a mashup of “Dunk” with Ben & Jerry’s Chunky Monkey flavored ice cream.
I have bad news for you though, if you want a pair, you’ll likely (more on this below) need to spend $2,000 or more, as the very limited run sold out instantaneously and can only be found on the secondary collector’s market on platforms like StockX. You’ll also want to keep an eye out for fakes.
Collaborations like this are excellent ways to strengthen a brand, including its trade dress, well beyond the scope of the core goods of the brand owner. Usually, a brand owner can only enforce its mark against another mark if the use of the other mark is likely to create confusion about the source of the goods or suggests endorsement, sponsorship, or approval, because of similarities in the marks and goods or other factors. That can be difficult to do when goods are seemingly unrelated, for example shoes and ice cream. In fact, I would generally assume one’s ability to dunk is inversely proportional to the amount of ice cream they consume.
By expanding use of marks and trade dress to seemingly unrelated goods like shoes and ice cream, not only is a direct link established between the goods in question, the brand owner can show that consumers expect to see its brand on a wide variety of goods, making enforcement easier against copycat marks appearing on goods not offered by the brand. When possible, establishing a high degree of consumer recognition, or brand strength, can be a critical factor in the likelihood of confusion analysis used to prove infringement.
To my knowledge, neither the strength of the Ben & Jerry’s trade dress nor the Nike Dunk Low silhouette has ever been determined in litigation (unlike the famous colors of John Deere), but it seems fair to say that by now, the Nike Dunks are one of the most recognized shoes on the market, having been commercially available since 1985. The “SB” version (for skateboarding) was launched in 2002 and has appeared in countless collaborations, many of which are highly sought after among shoe collectors, a.k.a sneakerheads. Indeed, we may soon have a determination about the strength of the Nike Dunk Low silhouette via a recent lawsuit filed by Nike.
No doubt relevant to that lawsuit will be the fact that Nike owns multiple federal trademark registrations for features of shoe silhouettes, including the following which shows features of the Nike SB Dunk Low:
(U.S. Registration No. 3711305)
As described in the registration, the mark consists of the design of the stitching on the exterior of the shoe, the design of the material panels that form the exterior body of the shoe, the design of the wavy panel on top of the shoe that encompasses the eyelets for the shoe laces, the design of the vertical ridge pattern on the sides of the sole of the shoe, and the relative position of these elements to each other.
Meanwhile, Ben and Jerry’s might be the most beloved premium ice cream on the market. Ben & Jerry’s owns an incontestable federal trademark registration for its trade dress, as shown in this drawing on file with the United States Patent and Trademark Office:
(U.S. Registration No. 4176490)
As described in the registration, the mark consists of the image of a cow in black and white, standing on green pasture. The pasture has a shade of lighter green on the horizon where it meets an image of a blue sky with white clouds as part of the background.
Combine the trade dress of these two powerful brands and you have an extremely expensive shoe, almost all of the value of which is derived from the goodwill of the brands and scarcity of the shoe, rather than innovation or materials.
It’s ultimately the kind of exclusive collector’s shoe you might see on the feet of a person staying at a luxury hotel adorned in the trade dress of another famous brand, this fictional version imagined by graphic designer Tarek Okbir …
(HT: Brand New)
It might also be the kind of shoe you could come to own, despite its high price tag. The Atlanta-based rapper / activist Michael Render, known professionally as Killer Mike (blogged about on DuetsBlog here), has donated his own pair of Chunky Dunkys to Ben & Jerry’s get-out-the vote campaign. For more details visit www.action.benjerry.com/rtjsweeps by Oct. 25. Below, Killer Mike can be seen wearing his Chunky Dunky shoes in a recent photo by Diwang Valdez published in Billboard magazine and shared via Killer Mike’s Instagram page a few weeks back:
So dear readers, what brands would you like to see as either shoes, ice cream, or hotels?
Hearty thanks to Colette Durst, Stephen Lee, and Susan Perera, for generously sharing their insights and perspectives about trademark nominative fair use.
By all accounts, the Midwest IP Institute was a great success this year despite the limitations of delivering knowledge in a virtual format, thanks Zoom.
Hearty thanks to Draeke Weseman for his great work in helping pull together Chapter 7 in the IP Book, which can be purchased here from Minnesota CLE.
In case you missed it, here is my Trademark Nominative Fair Use of Another’s Logo post from March, leading up to the 2020 AIPLA Annual Spring Meeting.
Welcome back to another edition of Merely Informational and Incapable Marks.
The above neighborhood Applebee’s is on my usual route to going anywhere from our home, so I’m predicting I’ve passed by well more than 10,000 times.
The temporary “Dining Room Open” signage is a recent addition from a few months ago, when Minnesota restaurants began to re-open their dining rooms.
Over the years, I’ve focused on the more permanent Welcome Back! above-door signage, wondering if Applebee’s ever has attempted to seek federal registration.
Seemed like a great blog topic, for some day, given my distaste for the USPTO’s insatiable appetite for fusing informational refusals with trademark incapability.
Since consumer perception controls trademark capability, favoring a review of the facts and circumstances (instead of incapability rules) makes more sense to me.
Nonetheless, I’ve assumed that the USPTO would reject Welcome Back! for registration, considering it merely informational and incapable as a trademark.
So, today’s the day, not because Applebee’s has sought trademark protection, but because of its Welcome Back commercial that ran much of this past summer.
The commercial focuses on the prominent Welcome Back! signage seared with John Sebastian’s Welcome Back tune, made famous by Welcome Back, Kotter.
Seeing how Applebee’s creatively linked its longstanding Welcome Back! signage and other brand messaging to a nostalgic and feel-good tune from the mid-70s, I thought, just maybe, Welcome Back! finally was added to its menu of marks.
After all, in another context, a creative fusion of branding elements led to Owens-Corning overcoming “well-settled” law against color trademarks, when O-C linked its pink-insulation advertising campaign to the beloved Pink Panther cartoon.
Although Applebee’s has not (yet) sought registration, Welcome Back apparently is on the intent-to-use trademark wish-list of a wholesale seafood distributor, for “take-out restaurant services,” and a few weeks ago registration was refused:
“Registration is refused because the applied-for mark is a slogan or term that does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others . . . . In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment . . . . Terms and expressions that merely convey an informational message are not registrable. . . . An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). . . . Nor will submitting a substitute specimen overcome this refusal.”
As predicted, the USPTO found Welcome Back to be merely informational and incapable of performing a trademark function for take-out restaurant services.
While overcoming the incapability refusal may appear an insurmountable climb for the seafood distributor, what if Applebee’s filed and faced a similar refusal?
Would Applebee’s be able to establish favorable evidence of consumer perception of Welcome Back! as a signal of its brand? If so, would the USPTO respect it?
