False suggestion of a connection under Section 2(a) of the Lanham Act prohibits registration of “matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols . . . .” 15 U.S.C. § 1052(a). Although the statutory protection against a false suggestion of a connection is designed not just to protect against deceptive use in commerce, but “to protect persons and institutions from exploitation of their persona.” Bridgestone/Firestone Res., Inc. v. Auto. Club de L'Quest de la France, 245 F.3d 1359, 1363 (Fed. Cir. 2001).

In an opposition proceeding, false suggestion of a connection requires a showing that: (1) Applicant's mark is the same or a close approximation of the Opposer's name or identity; (2) the mark would be recognized as pointing uniquely and unmistakably to the Opposer; (3) Opposer is are not connected with the goods or services of Applicant; and (4) Opposer is of sufficient fame or reputation that, when Applicant's mark is used in connection with its goods or services, a connection with the Opposer would be presumed. See Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 1369 (Fed. Cir. 2021); University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983).

PURPLE RAIN Energy Drinks

The Trademark Trial and Appeal Board (“TTAB”) recently granted summary judgment false suggestion of a connection under Trademark Act Section 2(a) in an opposition filed by Paisley Park, which claims to own rights in the name, image and likeness of Prince Rogers Nelson (the musical artist commonly known, and referred to herein, as “Prince”), and NPG, which claims to own registered and common law rights in the trademark PURPLE RAIN (collectively, “Opposers”), against a PURPLE RAIN trademark application filed by JHO Intellectual Property Holdings LLC (“Applicant”)[1] for energy drinks in Class 32 and dietary supplements in Class 5. NPG Records, LLC and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, Opposition No. 91269739, 2022 USPQ2d 770 (TTAB Aug. 23, 2022).

Close Approximation of Name or Identity

For the first factor of a “close approximation,” the issue is whether the mark sought to be registered would be recognized by consumers as a reference to a specific person or individual. In re Sauer, 27 USPQ2d 1073, 1074 (TTAB 1993) (finding BO BALL for oblong shaped leather ball properly refused under Section 2(a) as a reference to athlete Bo Jackson), aff'd mem., 26 F.3d 140 (Fed. Cir. 1994); In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1644 (TTAB 2015) (holding ROYAL KATE used with consumer products, including fashion products, suggested a connection with Kate Middleton).

The degree of similarity required to show a “close approximation” is more than something merely “intended to refer” or “intended to evoke” or otherwise to bring to mind the Opposer. U.S. Olympic Comm. v. Tempting Brands Netherlands B.V., 2021 USPQ2d 164, at *16-17 (TTAB 2021). Here, the evidence included a declaration, a survey, and unsolicited media coverage showing that “PURPLE RAIN is widely recognized as synonymous with Prince.”

Points Uniquely and Unmistakably

As to the second factor, to show an invasion of one's “persona,” the mark in question “must point uniquely” that persona. Univ. of Notre Dame du Lac, 217 USPQ at 509; see also Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1497 (TTAB 2015) (“Under concepts of the protection of one's ‘identity,' . . . the initial and critical requirement is that the name (or an equivalent thereof) claimed to be appropriated by another must be unmistakably associated with a particular personality or ‘persona.'” (quoting Notre Dame, 217 USPQ at 509)).

Here, the TTAB found plentiful evidence of the notoriety of Prince's PURPLE RAIN song and PURPLE RAIN movie. In addition, there was “evidence of Opposers' substantial merchandising efforts dovetailing the song and movie and the connection to Prince.” The survey of the general adult population also was relevant because there were “no limitations as to classes of purchasers” in the goods identified in the opposed application, so the TTAB presumed that “the identified goods and services will be purchased by the usual classes of purchasers which, in this case, include ordinary consumers.” Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Morton-Norwich Prods., Inc. v. N. Siperstein, Inc., 222 USPQ 735, 736 (TTAB 1984).

          As the Board [previously] stated in In re Jackson Int'l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417, 1420 (TTAB 2012) (“Jackson”), though in the ex parte context, “[i]f applicant wished to show that there are numerous individuals known as Benny Goodman, or that the renown of Benny Goodman, the bandleader, composer and clarinetist, has faded to the point that the applied for mark does not point uniquely and unmistakably to him, then applicant was obligated to introduce such evidence to rebut the evidence submitted by the examining attorney.”

Thus, the TTAB found no genuine dispute of material fact regarding the second factor under Trademark Act Section 2(a).

Connection with Applicant's Goods

There was no dispute that “Prince is not connected with Applicant's activities or the goods provided, or intended to be provided, under PURPLE RAIN.”

Sufficient Fame and Reputation

For the fourth factor of the Section 2(a) test, the person or identity to whom the subject mark refers must be sufficiently famous, or of such reputation, that relevant consumers of the applicant's goods would presume that the applicant has a connection with that person. See In re Int'l Watchman, Inc., 2021 USPQ2d 1171, at *25 (TTAB 2021). “There 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.” Id.

If the applicant's goods are of a type that consumers would associate them 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). “Unlike in the case of trademark or trade name infringement, it is enough that the defendant-applicant uses the plaintiff's name to cause a false connection between the plaintiff and the defendant's goods.” Piano Factory Grp., 2021 USPQ2d 913, at *14.

Here, the TTAB found the record contained “copious, unrebutted evidence of Prince's fame among the general consuming public and his unique association with the words PURPLE RAIN,” confirmed by a survey of the general adult population.

Consumers Accustomed to Celebrity Licensing

The TTAB agreed that 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. See Ass'n pour la Defense et la Promotion de L'oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1844 (TTAB 2007) (“The names and likenesses of well known persons frequently are licensed for use on various goods and services”); In re Sloppy Joe's Int'l Inc., 43 USPQ2d 1350, 1354 (TTAB 1997) (affirming refusal of mark containing the portrait of Ernest Hemingway for restaurant and bar services under Section 2(a)); see also Jackson, 103 USPQ2d at 1420 (noting, with respect to the mark BENNY GOODMAN for cosmetics, it is “commonplace for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods to capitalize on the renown of their names and brands”).

Opposition Sustained

Concluding that there is no genuine dispute of material fact as to the false suggestion of a connection claim under Trademark Act Section 2(a), the TTAB sustained the opposition and refused the registration.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

[1] Coincidentally, JHO also filed a trademark application, Serial No. 87449856, with an intent to use PURPLE HAZE for dietary supplements in Class 5.