In a precedential decision, the Trademark Trial and Appeal Board (TTAB) found that PURPLE RAIN was so closely associated with recording artist Prince that it granted summary judgment and refused an unrelated party’s application to register the trademark PURPLE RAIN for dietary supplements and energy foods because it falsely suggested a connection or sponsorship with the famous musician. NPG Records, LLC and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, 2002 USPQ2d 770 (TTAB 2022) [precedential].
JHO Intellectual Property Holdings applied for federal registration of the trademark PURPLE RAIN with the United States Patent and Trademark Office for dietary supplements, energy bars, and energy drinks. The application was opposed by two entities claiming rights through Prince or his estate: (1) Paisley Park Enterprises LLC (owner of Prince’s name and likeness), and (2) NPG Records LLC (owner of several PURPLE RAIN trademark registrations for various goods and services).
Paisley Park and NPG Records opposed JHO’s application on several statutory grounds, including Section 2(a) of the Lanham Act, which bars registration of any trademark that “falsely suggest[s] a connection with persons, living or dead.” The opposers provided abundant evidence showing Prince’s close association with PURPLE RAIN, arguing that a connection to Prince is presumed when PURPLE RAIN is used for JHO’s goods.
As the TTAB noted, Prince’s Purple Rain album was released in 1984 and has since sold over 25 million copies worldwide. Paisley Park and NPG Records supplied media coverage and commentary explaining that the song, album, and film of the same name were not only commercially successful, but “culturally, historically, or aesthetically important.” The opposers also submitted survey results illustrating that 66.3% of the respondents recognize PURPLE RAIN as a reference to Prince, and evidence of a wide-ranging licensing program where Prince’s persona and PURPLE RAIN were both used on an array of merchandise including toys, clothing, bags, and statues.
Paisley Park and NPG Records argued that this evidence, combined with accolades related to the song, album, and film of the same name, and significant unsolicited media coverage associating Prince with PURPLE RAIN, indicated that Prince was inextricably linked with the designation PURPLE RAIN in the minds of consumers.
To prevail in its motion for summary judgment on “false connection” grounds, the opposers needed to prove that there was no genuine dispute that:
- 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;
- Paisley Park and NPG Records are not connected to the PURPLE RAIN goods sold by JHO; and
- PURPLE RAIN is of sufficient fame or reputation that, when Applicant’s mark is used in connection with the goods, a connection with Prince is presumed.
Assessing the evidence and the parties’ arguments, the TTAB found no issues of material fact in any of these four elements, concluding that PURPLE RAIN is an approximation of Prince’s identity despite not using his name or likeness and that PURPLE RAIN “points uniquely and unmistakably to Prince.” The TTAB observed that the applicant did not include any reasoning for selecting the mark or any alternative definition of the term in its arguments. The parties agreed that Paisley Park and NPG Records are not connected to JHO’s goods. Finally, the TTAB found that the opposers’ use and license of PURPLE RAIN for a variety of products causes consumers to presume a connection with Prince when PURPLE RAIN is used with any goods, regardless of whether such goods are related to those offered or licensed by the opposers. Notably, the TTAB agreed with the opposers that “[b]ecause purchasers are accustomed to celebrity licensing, they may presume a connection with a celebrity even though the goods have no relation to the reason for the celebrity’s fame.” Accordingly, the TTAB granted the opposers’ motion for summary judgment and drowned JHO’s application in the purifying waters of Lake Minnetonka, refusing registration of PURPLE RAIN under Section 2(a) of the Lanham Act.
This case provides precedent for celebrities to oppose or seek to cancel third-party trademark applications or registrations for marks invoking their identity, regardless of whether they provide goods or services related to those in the applications or registrations. While few albums are as ubiquitous and closely connected with a single artist as Purple Rain, we can expect other song and album titles, nicknames, and other personal attributes which are tightly tied to an artist being raised to pursue “false association” challenges in the future. This case also highlights how a successful licensing program can significantly expand the scope of trademark rights enjoyed by a performing artist.
If you have questions about this case, trademark enforcement or licensing, or other trademark or entertainment matters, please contact your Michael Best attorney.