On January 11, the U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) had issued a precedential decision finding dilution by blurring and sustaining oppositions filed by Spotify AB against marijuana-related trademark applications. Spotify has crushed far smaller Potify in its bid to trademark its marijuana-themed moniker, with the Trademark Trial and Appeal Board ruling the names are “strikingly similar”.
Spotify has around 381 million users, including 172 million subscribers, in 184 business sectors. U.S. Software Inc., the organization attempting to register the trademark for Potify, gives both a site and a cell phone application. It permits clients to look for pot (marijuana) and interface with a nearby dispensary for conveyance.
Spotify contended, in addition to other things, that trademarking Potify would dilute its famous mark “by both blurring and tarnishment”. To persuade the board, Spotify needed to show it was the proprietor of a popular mark, its mark is particular, another trademark would dilute its mark and it had the trademark first.
The only difference between mark Potify and Spotify is that opposer's starts with a 'S' immediately before the shared letters P O T I F Y. In other words, as Spotify points out, applicant merely deleted the leading 'S' from its mark.
A trademark dilution claim expects that the proprietor's mark be distinctive and famous. To decide if a given mark is adequately distinctive and popular to be managed the cost of security, courts think about the following variables:
- The degree of the subject mark’s inherent or acquired distinctiveness;
- The duration and extent of use of the mark in connection with the goods or services it identifies;
- The duration and extent of advertising and publicity;
- The geographical extent of the relevant trading area;
- The channels of trade;
- The degree of the mark’s recognition in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought;
- The nature and extent of third parties’ use of same or similar marks; and
- Whether the mark has been registered.
To consider whether the applicant’s use of its mark will likely cause dilution by blurring, following things should be considered:
- Degree of similarity between applicant’s mark and opposer’s famous mark;
- Degree of inherent or acquired distinctiveness of opposer’s mark;
- Extent to which opposer is engaging in the substantially exclusive use of its mark;
- Degree of recognition of opposer’s mark;
- Whether the applicant intended to create an association with opposer’s SPOTIFY mark; and
- Any actual association between applicant’s mark and opposer’s mark.
In Combe International LLC and Dr August Wolff case which involved “non-prescription female intimate healthcare products”. The owner of the trade mark registration for Vagisil sued a competitor who was using the trade mark Vagisan. The United Kingdom court held that “the mark Vagisan is very, very similar” to Vagisil, noting that it is also used in relation to goods that are very similar to those covered by the registration. In assessing the likelihood of confusion, the judge postulated the notional customer, and came up with someone very specific: a woman (over 18) who wants to treat her condition, someone who is likely to purchase in-store rather than online, and someone who is likely to exhibit a degree of embarrassment, which may result in her displaying a lesser amount of attentiveness”.
Just as a point of interest, Googling Potify will show: “Showing results for spotify. Search instead for potify.”
Then, the judge needs to consider how renowned and distinct the Spotify brand is, prior to handling the terrifically significant inquiry of what sway the presence of a Potify trademark would have on the previous Spotify brand name.
The judge said in the ruling that “There is no question that Spotify is as famous as marks come, that Spotify goods and services are widely used and recognized by a large percentage of the United States population, or that opposer’s Spotify mark is highly distinctive. This was the case prior to applicant’s claimed date of first use of its mark”.
“Moreover, there is no evidence that any United States marks come as close to Spotify as applicant’s Potify mark. Opposer is understandably concerned, and, although we need only find likely dilution, we find it inevitable that Potify ‘will diminish [Spotify’s] distinctiveness”.
As a result, US Software Inc’s Potify trademark applications were refused.
In conclusion if Potify cannot be registered, then other marks ending in ‘otify’ – like Clotify, Votify, and Plotify – shouldn’t be registered either, yet those marks are all registered or in contrast if these marks are registered prior to Spotify, then Spotify couldn’t be registered.
In the present case, perhaps the board’s decision was based on Spotify’s brand which helped in getting a broad protection.