Precedential No. 24: "PURPLE RAIN" for Dietary Supplements Falsely Suggests a Connection with Prince, Says TTAB

Finding that the proposed mark PURPLE RAIN for dietary and nutritional supplements falsely suggests a connection with the famous musician and performer Prince, the Board granted Opposers' motion for summary judgment under Section 2(a) of the Trademark Act. The record contained "copious, unrebutted evidence of Prince’s fame among the general consuming public and his unique association with the words PURPLE RAIN." The Board agreed with 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." NPG Records, LLC and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, 2022 USPQ2d 770 (TTAB 2022) [precedential].

Section 2(a), in relevant part, prohibits registration of “matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols . . . .” In this case, Opposers had to establish there was no genuine dispute that:

1. Applicant’s mark PURPLE RAIN is the same or a close approximation of Prince’s name or identity
2. The mark would be recognized as such, in that it points uniquely and unmistakably to Prince;
3. Opposers are not connected with the goods sold by Applicant or Applicant’s other activities under the PURPLE RAIN mark; and
4. 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.

As to the first element, the evidence of use of the term PURPLE RAIN by Prince included his album, a movie, and sales of associated merchandise using the term, as well as survey results showing that the public commonly associates the term PURPLE RAIN with Prince. The Board therefore found that PURPLE RAIN is widely recognized as synonymous with Prince.

As to the second element, there was "plentiful evidence of the notoriety of Prince’s PURPLE RAIN song and PURPLE RAIN movie," as well as evidence of substantial merchandising efforts "dovetailing the song and movie and the connection to Prince." Opposers' survey results showed that a significant percentage of the general public (66.3%) recognizes PURPLE RAIN as a reference to Prince. And so, the Board found that PURPLE RAIN points uniquely and unmistakably to Prince.

As to the third element, the evidence was uncontroverted that Prince is not connected with Applicant’s activities or the goods provided, or intended to be provided, under PURPLE RAIN.

As to the fourth element, the Board observed that “[t]here is no prerequisite that the institution or person actually provide the goods in order to find that an applicant’s mark creates a false suggestion of a connection. Nor does it ‘require proof that a prior user’s reputation ‘is closely related to an applicant’s goods.’” Int’l Watchman, Inc., 2021 USPQ2d 1171, at *25 (citing Piano Factory Grp., 2021 USPQ2d 913, at *14 (internal citation omitted))."

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. Int’l Watchman, Inc., 2021 USPQ2d 1171, at *25 (citing cases).

The Board agreed with 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 celebrity's fame." Opposers also showed that they use and license PURPLE RAIN for a variety of consumer products. The Board found that "consumers encountering Applicant’s mark, when used in connection with Applicant’s goods, will presume a connection between PURPLE RAIN and Prince under the fourth factor of Trademark Act Section 2(a)."

In conclusion, the Board found no genuine dispute of material fact as to the false suggestion of a connection claim under Trademark Act Section 2(a), and so it entered judgment in favor of Opposers, sustaining the opposition.

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TTABlogger comment: Opposer Paisley Park owns rights in the name, image and likeness of Prince Rogers Nelson (the musical artist commonly known as “Prince”), Opposer NPG owns a registrations for the mark PURPLE RAIN, and the two opposers jointly use PURPLE RAIN in licensing and merchandising,

Text Copyright John L. Welch 2022.