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:
- Applicant’s mark PURPLE RAIN is the same or a close approximation of Prince’s name or identity;
- The mark would be recognized as such, in that it points uniquely and unmistakably to Prince;
- Opposers are not connected with the goods sold by Applicant or Applicant’s other activities under the PURPLE RAIN mark; and
- PURPLE RAIN is of sufficient fame or reputation that, when Applicant’s mark is used in connection with its goods, a connection with Prince would be presumed
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.”
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.”
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.
[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.