TTAB Rains on ‘Purple Rain’ Energy Drink Trademark Application | Akerman LLP – Trademarks, Works and Secrets

On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) dismissed on summary judgment the application by JHO Intellectual Property Holdings (“Plaintiff”) to register the trademark “PURPLE RAIN” for a variety nutritional supplements, diet drinks, and energy bars (collectively, the “Applicant’s Wares”). The TTAB concluded that the proposed mark incorrectly suggested a connection to the famous musician Prince.

The motion for summary judgment was filed by Paisley Park Enterprises, a company owned by Prince’s estate, and NPG Records, LLP, who claimed to own trademark rights to the term PURPLE RAIN (collectively, the “Opponents”). The Opponents have provided considerable evidence that PURPLE RAIN is the title of Prince’s iconic album (shown below) and film, scored by and featuring Prince. The evidence also demonstrated the use of PURPLE RAIN for Prince’s concert tour promoting his album and for merchandising efforts associating the song and film and the connection to Prince. Opponents further offered survey results showing that a significant percentage of the general public over the age of 18 (66.3%) recognized PURPLE RAIN as a reference to Prince.

Against these arguments, the plaintiff argued, without supporting evidence, that the survey did not ask younger respondents, that’s to say., the relevant consuming population of Plaintiff’s Wares, regarding their association of PURPLE RAIN with supplements or energy drinks. The TTAB rejected this argument because the trademark application did not limit the “classes of purchasers in the respective identifications”.

The TTAB relied on Section 2(a) of the Trademark Act, 15 USC § 1052(a), which in relevant parts prohibits the registration of “matter which may . . . falsely suggest a connection to persons, living or dead, institutions, beliefs or national symbols . . . .” To prevail, the opponents had to establish that there was no real dispute that:

(1) Plaintiff’s mark PURPLE RAIN is identical or very similar to the name or identity of Prince;

(2) The mark would be recognized as such, in that it uniquely and unequivocally points to Prince;

(3) the opponents are unrelated to the products sold by the plaintiff or to the plaintiff’s other activities under the PURPLE RAIN mark; and

(4) PURPLE RAIN has sufficient notoriety or reputation that when the plaintiff’s mark is used in connection with its goods, a connection with Prince is presumed.

With respect to the first factor, the TTAB found that evidence of Prince’s uses of the phrase PURPLE RAIN (including in relation to his musical career, an album, a film, and sales of associated merchandise using the term) and a survey showing that the public commonly associates the term PURPLE RAIN with Prince has demonstrated without real challenge that PURPLE RAIN is widely recognized as a synonym for Prince.

Regarding the second factor, the TTAB found that PURPLE RAIN uniquely and unequivocally points to Prince. The TTAB felt that there is “ample evidence of the notoriety of Prince’s song PURPLE RAIN and movie PURPLE RAIN”. TTAB further explained that the survey results showed that a significant percentage of the general public (66.3%) recognizes PURPLE RAIN as a reference to Prince.

With respect to the third factor, the TTAB found that the evidence was uncontradicted that Prince is unrelated to the plaintiff’s wares supplied under the mark PURPLE RAIN.

With respect to the fourth factor, the TTAB found that, based on the compelling evidence of Prince’s fame among the general public and his unique association with the words PURPLE RAIN, there is no real dispute of the material fact that consumers encountering the PURPLE RAIN mark will assume a connection between PURPLE RAIN and Prince.

In summary, the TTAB concluded that the proposed trade mark “PURPLE RAIN” incorrectly suggested a connection to Prince under Section 2(a) of the Trade Marks Act.

This previous TTAB decision shows that the TTAB will disregard applications for registration of imitative marks, even on products that are very different from the original use and even when the original user of the mark is deceased.

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