There are two registered trademarks on the USPTO principal registrar for RASPBERRY BERET – one for cookies, the other for fruit-flavored beverages. But neither of them belong to the former artist formerly known as Prince, may he rest in peace. This is perhaps not surprising, given the special registrability relationship that single titles of artistic works have with the USPTO (see https://mpep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e2517.html). But in the wake of Prince’s death and the brewing fight in the Minnesota legislature to create a post-mortem right of publicity that survives 50 years after the artist’s death (or in perpetuity in the event of continuous use), it begs another question: Given a celebrity’s right to assert a claim of Lanham false endorsement, does it really matter if a dead celebrity has a post-mortem right of publicity? The answer, like all legal questions, is that it depends.
Courts have recognized false endorsement claims under § 43(a) of the Lanham Act where a celebrity’s image or persona is used in association with a product so as to imply that the celebrity endorses the product. The mark at issue is the plaintiff’s identity. As a corollary, it has been repeatedly held that a claim of Lanham Act false endorsement is distinct from a right of publicity violation. Accordingly, even if a celebrity does not have a post-mortem right of publicity, a right generally governed by statutory law of the state where the celebrity died, that same celebrity estate could still have a viable claim to protect the celebrity persona. Some may argue that a false endorsement claim is more cumbersome, as a plaintiff is required to prove a likelihood of consumer confusion regarding that endorsement, a requirement that does not typically exists to assert a publicity violation. On the other hand, Lanham Act claims carry with them advantages, including the ability to pursue them in federal court absent diversity jurisdiction. It will be interesting to see how the fight to pass new right of publicity laws plays out in Minnesota for its native son, but in the interim, the upsurge of unlicensed goods bearing Prince’s image and distinctive symbol may very well amount to actionable violations of the Lanham Act.