Spotify emerged victorious in a trademark lawsuit against ‘Potify‘, a cannabis company. The Trademark Trial and Appeal Board refused to register “Potify” as an app for marijuana dispensaries. As a matter of fact, the Board found that it would dilute Spotify AB’s mark, ruling the names “strikingly similar”.
As we all know, Spotify is a big as it gets. On the other hand, Potify is a US Software Inc. service that started in 2017. It allows users to search for cannabis and connect with a local dispensary for delivery.
Spotify argued that the Potify brand is “diluting” its own brand by association and “blurring and tarnishing” it. The company also had to prove that it was the owner of a famous mark, its mark is distinctive, another trademark would dilute its mark and it had the mark first. From his side, Potify CEO pointed that “the Spotify name did not come to mind when developing the name.”
Even though board members did not find that an association between the two companies has occurred or will occur, it did not discount that as a possibility. You can read the explanation from the decision below.
“In any event, because the marks are so similar in how they look and sound, and in their structure, cadence and essential nature, applicant’s mark will cause consumers to ‘conjure up’ the opposer’s famous mark, and ‘associate the two”.
“The only difference between applicant’s mark Potify and opposer’s mark Spotify is that opposer’s starts with an ‘S’ immediately before the shared letters P-O-T-I-F-Y. In other words, as opposer points out, the applicant merely deleted the leading ‘S’ from opposer’s mark”.
Potify can still use its name in the future, but trademarking the handle is going to be prohibited.
Stay tuned for more news!