Spotify strikes ‘Potify’ marks in TTAB opposition
The Trademark Trial and Appeal Board (TTAB) will not register a software company’s “Potify” trademarks because it would dilute Spotify’s existing marks.
In a precedential opinion handed down Monday, January 10, the TTAB refused US Software’s two trademark applications to protect the name of its back-end software platform designed for legal marijuana dispensaries.
The company sought to register its mark under International Class 9 for downloadable software, Class 25 for clothing, Class 35 for consumer information in the field of medical marijuana, and Class 45 for computer services.
Spotify opposed the registration of the marks, claiming that they infringed its existing “Spotify” marks, which were also registered under Class 9.
The music streaming giant claimed that the registration of the “Potify” marks would be likely to cause confusion with and dilute its trademarks, asking the TTAB to refusal the application of the marks.
Spotify argued that, as “pot” is a “colloquial name for marijuana”, which remains an illegal drug under federal law, consumers would associate the brand with the promotion of marijuana use.
However, the TTAB noted that Spotify offers and promotes music, podcast and video content related to marijuana throughout its website and mobile app, including its own video series “Breaking Bread” which featured various “marijuana-infused meals” hosted by music artists.
In response, US Software compared its platform to Shopify, claiming that it was the key inspiration for the name rather than any association with Spotify and denied that the Spotify branding had any influence on choosing the name of the software.
The TTAB ruled that there was a “high degree of similarity” between the two parties trademarks and that the “Potify” mark will “trigger consumers to conjure up” the famous Spotify marks.
It also found US Software’s claims that the “Potify” mark had “nothing to do with” Spotify “hard to believe”, noting that the company’s two founders were both longtime Spotify users prior to the application of the “Potify” marks.
“It defies logic and common sense that a long time, frequent Spotify user, and another longtime Spotify user, jointly came up with the highly similar name Potify without intending to,” the TTAB said.
The board also noted that this “leap in logic” was exacerbated by the fact that both the Potify and Spotify software perform many similar functions “albeit in connection with marijuana rather than music”.
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