If You Come for the Prince, You Best Not Miss
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In a precedential decision, the Trademark Trial & Appeal Board (Board) granted two opposers' motions for partial judgment on their claim of false suggestion of a connection under Section 2(a) of the Trademark Act based on a trademark application to register the mark PURPLE RAIN. NPG Records, LLC, and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, Opp. No. 91269739 (TTAB Aug. 23, 2022) (Kuczma, Adlin, Johnson, Administrative Trademark Judges) (per curiam).
JHO Intellectual Property Holdings sought to register the mark PURPLE RAIN on the Principal Register in standard characters for several dietary and supplemental energy drinks and for "Energy drinks; Isotonic drinks; Non-alcoholic drinks, namely, energy shots, Sports drinks." Paisley Park opposed, claiming to own rights in the name, image and likeness of famed musical artist Prince. NPG also opposed, claiming to own registered and common law rights in the trademark PURPLE RAIN. Paisley Park and NPG moved for summary judgment based on an assertion of false suggestion of a connection with Prince under Trademark Act Section 2(a). JHO admitted that its proposed mark was identical to Paisley Park and NPG's marks and that its use of such mark was without consent or permission.
"Purple Rain" is associated (and often synonymous) with Prince. Paisley Park and NPG presented as evidence, for example, that PURPLE RAIN is a certified "13x Platinum" album selling millions worldwide, the 143rd Greatest Song of All Time according to Rolling Stone magazine, and the title of an Academy-Award-winning motion picture scored by and starring Prince. Paisley Park and NPG showed that unauthorized use of PURPLE RAIN is far from unusual, citing 17 unauthorized uses in December 2021. Paisley Park and NPG also had expert surveys conducted that established the connection between Prince and "Purple Rain." JHO's rebuttal included conclusory statements that the surveys conducted by Paisley Park and NPG's expert did not ask respondents about the association of "Purple Rain" with energy drinks or supplements. JHO also pointed to a list from the US Patent & Trademark Office's databases of third-party applications and registrations that includes PURPLE RAIN or its homophone PURPLE REIGN.
In view of Paisley Park and NPG's evidence, the Board first found that there was no genuine dispute that the opposition was within reach of the Paisley Park and NPG's zone of interests, and they were thus entitled to oppose registration of the mark.
Turning to the merits, the Board explained that in order to prevail on their motion under Section 2(a), Paisley Park and NPG were required to establish there was no genuine dispute that:
- JHO's mark is the same or a close approximation of Prince's name or identity.
- The mark is uniquely and unmistakably pointed to Prince.
- Paisley Park and NPG are not connected with JHO's goods or activities related to the mark.
- "Purple Rain" is sufficiently famous to establish a presumed connection with Prince.
On the first factor, the Board explained that the approximation must be "more than merely intended to refer or intended to evoke" Prince's name or identity. The Board found that there was no genuine dispute regarding this factor in light of Paisley Park and NPG's evidence establishing the connection between Prince and "Purple Rain," JHO's failure to challenge that evidence and common sense.
Turning to the second factor, the Board noted that "it is not sufficient to show merely prior identification with the name adopted by another . . . . The mark . . . as used by [Applicant], must point uniquely to [Prince]." Paisley Park and NPG's evidence, including the survey showing that 66.3% of the general public recognize "Purple Rain" as a reference to Prince, was sufficient to show that the mark points uniquely and unmistakably to Prince. JHO argued that the survey was not directed to their target market (e.g., college students), but the Board found that where there was no limitation as to the class of purchasers, no limitation need exist for the survey. Further, the Board found JHO's argument involving third-party registrations to be unavailing, as only three of the marks related to food and drink, and "third party registrations and applications are not evidence that the marks depicted therein are in use or that the public is aware of them."
There was no dispute that the third factor was satisfied.
Lastly, for the fourth factor, the Board found "[t]here is no prerequisite that [Prince] actually provide [energy drinks or supplements] in order to find that [there is] false suggestion or connection." Due to Paisley Park and NPG's evidence that they market a variety of consumer products and license the mark PURPLE RAIN, the Board agreed that purchasers would presume a connection to Prince.
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