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No Reign for Purple Rain?: An Update

Author: Jordan Franklin

Contributing Editor: John DavisWilliam Yarbrough

This year marks the 36th anniversary of the movie Purple Rain so I thought this topic was appropriate to discuss. The topic being the United States Patent and Trademark Office (USPTO) initially rejecting The Prince Estate’s trademark application for his famous shade of purple.

prince-announces-pantone-custom-color-purple.jpgTo briefly answer the question I’m sure you are thinking: “Yes you can trademark a color”. That color must “be so distinctive as to identify a single source of goods and/or services in the minds of consumers.” In other words, a color can be protected if you can look at that color and immediately associate it with a certain brand/company and the goods and/or services they provide. A few common examples of color marks are Home Depot Orange, Tiffany Blue, UPS Chocolate Brown (Pantone 462C), and Target Red, among many others.

With that being said, Prince’s estate wanted to make sure his signature distinctive and recognizable color was similarly protected.

So, in 2017, about a year after Prince’s death, color specialists from Pantone created a custom color that is said to have captured the very essence of Prince’s famous shade of purple. The shade serves to embody the essence of the Oscar winning movie sound track and culture shaping film. I don’t know about y’all but when I see it, I can definitely see Prince. Well, the USPTO disagrees. In their initial rejections the USPTO believed consumers “will not perceive the color purple as identifying” Prince as the source of the goods or services. In their examples they listed music artists that have used purple on packaging and other promotional materials such as album covers.

In response, the Applicant’s attorneys listed many instances of Prince’s purple being used for promotion, advertising, packaging, and various instances of tributes to The Artist shortly after Prince’s death, including:

  • The Eiffel Tower in Paris, France;
  • The Empire State Building in New York, New York
  • Hard Rock Café in Times Square, New York, New York;
  • Apollo Theater in New York, New York;
  • U.S. Bank Tower, Los Angeles, California;
  • Borough Hall, Brooklyn, New York;
  • Melbourne Arts Centre in Melbourne, Australia;
  • I-35W and the Lowry Avenue bridges in Minneapolis, Minnesota;
  • Target Field (home of the Minnesota Twins)
  • Superdome in New Orleans, Louisiana;
  • City Hall in San Francisco, California;
  • City Hall, Baltimore, Maryland;
  • City Hall in Los Angeles, California;
  • City Hall in Las Vegas, Nevada;
  • City Hall, Montreal, Canada;

A #GoogleDoodle 4 Prince (1958-2016)In addition, the estate’s attorneys submitted many public and examples of purple that has Prince’s face as evidence that this specific shade is in fact distinctive to the Prince brand. Or, in Google’s case, simply the company’s general search page, but in Prince Purple with purple rain in the background.

The Prince estate had been trying to get the trademark application pushed through since they filed it in October of 2018 (US Application 88155481, and the new application created from the division of the original, US Application 88975900). The USPTO had even issued a final rejection on the application. One of the grounds for rejection states:

…The color purple identified as Pantone Matching System color Love Symbol #2 used on the graphics on the web site and promotional materials in the advertising of the services, and used on guitars, stage clothing, stage lighting and the exterior of the Paisley Park Studio and museum in the performance of the services…The commercial impression of the [color] mark changes depending on how it is used on the goods.

US App 88975900What does this mean? So, under Trademark application requirements the applied for mark must match the specimen (aka the examples/proof of use you submit that has the mark on it) exactly. One of the biggest issues, according to this rejection, is that the shade changes depending on how it’s being used and what it’s being used on. The shade of purple on the vinyl is not the same exact purple used in stage lighting, which doesn’t exactly match the Pantone purple submitted.

Trademark image

In response, the Estate’s attorney of record requested the application be reconsidered after the final office action was issued, a new mark in the shape of a CD and a performance venue (pictured here) with the Pantone hue was submitted and the substitute specimen was Prince’s “Rave—In 2 the joy fantastic” CD, which bears the same hue.

The USPTO was ultimately persuaded, Prince’s estate was successful and, as of March 17, 2020, Prince’s estate now enjoys the ranks of a very small group that have successfully registered colors as trademarks. Twice.