TTAB rulings are sometimes less exciting than cases we pluck from the federal judiciary — but this one involves Prince and the mark PURPLE RAIN. NPG Records (NPG) and Paisley Park Enterprises (Paisley Park) filed an opposition to the attempt of Bang Energy Drink to register the mark PURPLE RAIN for the sports supplements and powdered drinks categories.
Paisley Park started its opposition by saying that the phrase “Purple Rain” is uniquely associated with Prince’s works of that name — a 13-times platinum album and a major motion picture. Paisley Park’s other uses of the mark were diverse, including licensing for t-shirts, clothing, and other consumables. Paisley Park further added that because PURPLE RAIN is uniquely associated with Prince, the applicant would create the false association that Prince’s estate had sponsored its use.
As is typical of such cases, Paisley Park backed up its assertions with a professional survey, which was among the more interesting aspects of this case. They surveyed people 18 or over as to whether they recognized the phrase Purple Rain. Some 66% did. The defense argued that the survey shouldn’t have been composed of people that were 18 or older because the Applicant’s target consumers are 18 to 30. The Board disagreed.
Bang pointed out that there were other, previously existing registrations of PURPLE RAIN in the beverage category. The TTAB found that the existence of other registrations does not necessarily mean that the public is aware of those products. They might be confusingly similar, but have yet to be discovered as such.
The TTAB came to its decision using a process similar to what one might expect from a fame analysis for anti-dilution purposes. It found that PURPLE RAIN’s association with Prince is so strong that it is likely to be associated with Prince in any connection with any consumer products. It was up to the applicant to show that PURPLE RAIN is no longer associated with Prince — a very tall order at which the applicant ultimately failed. As unlikely as that was, disproving that the mark was not associated with Prince was the only way the TTAB had to determine whether a person had lost fame to the extent that their name (or song title that is synonymous with their name) had become available to all.
So, to the extent you can choose your battles, it’s better to start by avoiding problematic branding.
