It’s back to the drawing board for a cannabis dispensary software company after an attempt to register the “Potify” trademark sparked the ire of the music streaming platform Spotify.
According to a review [PDF] of the US Trademark Trial and Appeal Board (TTAB), which denied its registration request and ruled in favor of Spotify, “Potify” was supposed to be:
The software also had the ability to sell clothing, “provide information to consumers in the area of medical marijuana dispensary inventories and locations”, forums, and more.
Spotify, however, had other ideas – and it’s easy to see why. The “Potify” brand as pictured in the document roughly resembles that of Spotify, with the “S” logo and circle omitted, and starting with a lowercase “p”.
The company provided a bunch of evidence why “US Software Inc” shouldn’t get away with it, including that it has owned the trademark for 13 years and is a “famous” name, but the argument mostly boiled down to the “dilution”. of the Spotify brand – or the loss of its distinctiveness in association with “Potify”.
Administrative Law Judge Michael B Adlin agreed, writing: “The only difference between the plaintiff’s mark POTIFY and the opponent’s mark SPOTIFY is that the opponent’s mark begins with an ‘S’ immediately before the shared letters POTIFY. . In other words, as the opponent points out, the applicant has simply deleted the first “S” from the opponent’s mark. “
He added that the logos were “oddly similar”.
Interestingly, US Software Inc CEO Gusein Suleimanov and COO Ivan Suslov claimed that by coming up with the name they “didn’t think of Spotify or anything. associated with Spotify “and” the name of Spotify did not come to mind when developing the name of Potify. “
Nonetheless, Adlin was blunt: “While we only need to find a probable dilution, we find it inevitable that POTIFY ‘diminishes the distinctiveness of SPOTIFY’.”
The guys from “Potify” were disappointed with the results. Speaking to the Law360 (paywall) legal newswire, their attorney, Kevin Davis, said, “The term ‘pot’ has a deeply rooted history in the United States as a colloquial term for marijuana. “and the ‘POTIFY’ brand immediately evokes the history, politics and emotions associated with marijuana in the United States, not an image of Spotify.”
He claimed that Spotify’s opposition to the brand was “contradictory”, pointing to Spotify’s range of cannabis-related music and podcasts, and that other similar brand names (“Clotify, Votify, Notify and Plotify” ) had been successfully registered as trademarks.
So we have a US Software Inc in desperate need of a new name. We are sure that the Register the readership can help them. Put your suggestions in the comments. ®
Comments are closed.