CHANHASSEN, Minn. (KMSP) - Prince was a controlling lion when it came to his music, but he could be more of a dove when it came to controlling his own name.
A review of federal trademark filings shows Prince twice allowed the trademark for his name to lapse, and each time had a new law firm re-file to make the trademark active. A Minneapolis trademark attorney called the timeline “highly unusual.”
While Prince could still sue someone infringing on his name even without a federal trademark registration, a federal filing provides extra protection because approved trademarks are presumed valid in any lawsuit. Additionally, filing only costs a few hundred dollars — a nominal fee for the extra protection of a name worth millions.
“For a guy who was a musical genius, and quite frankly, a branding genius, to not have some of these trademark applications and registrations buttoned up, struck me as really odd,” Martha Engel, a patent and trademark attorney at Winthrop and Weinstine, told Fox 9. Engel has blogged about Price’s trademark history on the firm’s blog, http://www.duetsblog.com.
Lawyers for Prince first filed to trademark the name, Prince, in 1996, listing the owner as Paisley Park Enterprises. However, the trademark lapsed in 2004. In 2005, a new attorney filed for a trademark. But it lapsed, again, in 2013. In 2014, another new attorney filed again, and the trademark was approved this Tuesday, April 26, 2016.
“I was surprised to see how many applications he had that were abandoned, and how many applications he had that were by different law firms,” Engel told Fox 9.
While the trademark for Prince’s name lapsed on two occasions, the trademark for his symbol has remained active with no lapses. The trademarks give Paisley Park Enterprises the right to use the name and symbol for clothing and entertainment.
Prince’s Image & Likeness
A much more messy legal issue than trademarks is who controls Prince’s likeness and image. Minnesota has no law that allows family members to automatically inherit the right to control, or license, someone’s image. In Prince’s case, this right, called the “right of publicity,” could be worth hundreds of millions of dollars.
For Prince, that includes “the Purple Rain hair he had, the Purple outfit, the big shoes, the motorcycle. All of that together works with his image, likeness,” Tiffany Blofield, an intellectual-property attorney, told Fox 9.
While Minnesota has no state law specifically granting a “right of publicity,” a federal appeals court suggested Minnesota state courts could still recognize the right. However, getting a court to allow Prince’s family to own the right to control or license his image would require some legal action. Blofield believes “it’s going to be a battle in the courts.”