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Purple Rain Trademark Opposition has Prince Back in the Limelight

Prince Trademark Lawsuit - Purple Rain

The songs released by Prince Rogers Nelson – frequently referred to simply as Prince – made the musician an international icon. His death in April 2016 sent shock waves throughout the music industry. Just one day after his birthday in 2021, though, the Artist Formerly Known as Prince found himself in a trademark dispute over “Purple Rain.”

Released in 1984, Purple Rain was Prince’s sixth studio album. It contained a song of the same name and would eventually become the focus of a major motion picture. Over 35 years after its release, though, a company has attempted to trademark the name for use on energy drinks. This caught the attention of Prince’s estate.

The Estate of Prince vs JHO Intellectual Property

In January 2020, JHO Intellectual Property Holdings filed a trademark registration for the term “Purple Rain” in several trademark classes. The primary class listed is IC-005 with a focus on nutritional drinks. The applicant is affiliated with Vital Pharmaceuticals, one of the largest energy drink companies in the world.

Although the original application was filed over a year ago, the Estate of Prince Rogers Nelson didn’t submit a trademark opposition until June 8, 2021. While there’s typically only a 30-day window to do this after publication in the Official Gazette, the estate filed for several extensions. In their opposition notice, they list a variety of reasons why the USPTO shouldn’t grant registration.

These included:

  • Priority and likelihood of confusion.
  • Dilution by blurring.
  • False suggestion of a connection with persons.

The opposition notice points out the fame of the term Purple Rain and its recognizable connection to the popular musician. While a likelihood of confusion is typically enough to sustain an opposition, Prince’s estate also makes the point that fans may believe the energy drinks in question are somehow connected to or endorsed by the Prince brand.

If the Estate of Prince can prove any of these issues to the Trademark Trial and Appeal Board (TTAB), it’s likely that they’ll reject the application for registration.

Is Prince’s Purple Rain Distinctive?

One of the biggest issues that will come into play in this case is distinctiveness. This is an important part of garnering and maintaining trademark rights. The opposition notice filed with the TTAB says that Purple Rain, which they have several trademarks for, is “sufficiently famous and distinctive [enough] to warrant protection.”

They also point out that the term didn’t exist in the American lexicon until the late musician used it in his song. This is a hard point to argue against. Any Google search for Purple Rain unrelated to Prince only returns a South Korean band formed in 2019 and a hair dye color. Prince certainly made the term famous, but does this mean other brands can’t use these words?

In order for JHO Intellectual Property Holdings to win this case – assuming they even fight it – they’ll need to disprove the claims from the Estate of Prince. Since Purple Rain appears to be distinctive and the estate has continuously asserted rights, though, this could be a tough mountain to climb.

What Comes Next?

If JHO Intellectual Property Holdings decides to move forward with this case, they have until July 18, 2021 to file an answer. This assumes they make no extension requests. Either party to this case can concede at any point, but if neither chooses to do so, the dispute could end up stretching into December 2022.

Many trademark disputes involve fledgling companies and larger corporations, but this case could be different entirely. JHO maintains hundreds of registrations with the USPTO, so they likely have the resources to argue their case before the TTAB. Only time will tell the eventual outcome of this dispute, but if JHO chooses to fight, it will be interesting to hear their arguments.

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