Trademark Act
Subscribe to Trademark Act's Posts

If You Come for the Prince, You Best Not Miss

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 [...]

Continue Reading




Seal of Disapproval: TTAB Refuses Registration of County Logos

The Trademark Trial & Appeal Board (Board) issued a precedential decision affirming the US Patent & Trademark Office (PTO) Examining Attorney’s refusal to register two different logo marks filed by southern California’s County of Orange because the marks consisted of and comprised, respectively, an insignia of a municipality. The Board found that a logo adopted by a government entity does not have to be “official” to constitute an insignia for which trademark registration is prohibited under Section 2(b) of the Trademark Act, 15 U.S.C. §1052(b). In re County of Orange, Ser. Nos. 87419378; 87639750 (TTAB, Aug. 4, 2022) (Shaw, Coggins, Allard, Administrative Trademark Judges).

The County applied to register two logo marks. The US trademark applications described one mark as “a circle with the image of three oranges in front of an orange grove and . . . mountains with the words ‘COUNTY OF ORANGE’ . . . and . . . ‘CALIFORNIA’ . . . [around] the circle” (Circle Mark). The second logo mark featured a park ranger badge design that encompassed the Circle Mark in its entirety.

The PTO examining attorney refused registration of both logo marks under Section 2(b), which imposes an absolute bar on registration on either the Principal or Supplemental Register of a mark that “[c]onsists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”. This section reflects the sentiment that such symbols are indicia of government authority that ought to be reserved solely for signifying the government, and which should not be registered as symbols of origin for commercial goods and services.

On appeal to the Board, the County argued that the logo marks did not constitute “insignia” because they were not an “official” seal of the County, and, even if they were, registration should not be precluded because the County is not a “municipality.” Considering both of these arguments in turn, the Board provided analysis specific to both the circle and badge iterations of the applied-for logos.

The County argued first that the proposed marks could not constitute an insignia of Orange County, California, because the County created and adopted an official seal (a design of an orange having a stem with three leaves) more than a century ago, in accordance with the applicable state government code requiring a two-step process for adopting an official seal.

The Board found this argument unpersuasive, noting that although the Circle Mark had not undergone the state’s two-step process to become an “official” seal, Section 2(b) does not distinguish between “official” and “unofficial” insignia. Therefore, formal adoption of an “official” seal is not required for an insignia to otherwise fall under the Section 2(b) bar to registration.

The Board explained that the County uses the Circle Mark for a plethora of official government [...]

Continue Reading




BLOG EDITORS

STAY CONNECTED

TOPICS

ARCHIVES