The U.S. Patent and Trademark Office (USTPO) last week sustained two oppositions filed by Spotify AB against two trademark applications by U.S. Software Inc. for its cannabis software POTIFY, IP Watchdog reports. The USTPO found POTIFY’s trademarks would have diluted and blurred trademarks held by the popular music streaming service.
U.S. Software had filed the trademark applications in 2017 and 2018 which sought to register POTIFY for: “downloadable software for use in searching, creating and making compilations, rankings, ratings, reviews, referrals and recommendations relating to medical marijuana dispensaries and doctor’s offices and displaying and sharing a user’s location and finding, locating, and interacting with other users and place, in International Class 9,” according to the January 10 decision. The company had also sought the trademark for clothing, medical cannabis information, creating an online community for medical cannabis patients and schedule healthcare services.
Spotify opposed the mark, claiming common law rights to the SPOTIFY registration for their music and entertainment software and advertising and that the POTIFY mark would likely cause consumer confusion and dilution. The company also claimed that because “pot” is a colloquial term for cannabis, “consumers will associate the POTIFY mark with the promotion of marijuana use” and any “association of marijuana-related goods and services with the SPOTIFY mark is likely to tarnish the SPOTIFY mark.” The Trademark and Trial Appeal Board noted that Spotify already hosts content, such as music and podcasts, related to cannabis.
U.S. Software argued that its product is not for individual consumers, rather “sales systems, telemedicine systems, and enterprise resource planning systems,” and “is a back-end software platform designed for legal marijuana dispensaries to market and sell their products.” The company also argued that POTIFY existed in 2014 before Spotify became famous and was derived from the Shopify moniker, not the streaming platform.
Ultimately, the board found that “because the marks SPOTIFY and POTIFY are used for software products that perform analogous functions, and are so similar in appearance and sound, their commercial impressions are similar even if consumers take different meanings from SPOT and POT,” and it is “inevitable POTIFY will diminish SPOTIFY’s distinctiveness.”
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