Business News Digital Legal

Spotify successfully blocks Potify trademark application

By | Published on Wednesday 12 January 2022


The US Trademark Trial And Appeal Board yesterday sided with Spotify in a trademark dispute with an American software company that has developed a platform via which legal marijuana dispensaries can market and sell their products called, yes, you guessed it, Potify.

US Software Inc launched its Potify service in 2017, though says it started working on the venture in 2014, a mere three years after Spotify’s launch in the US market.

And – the trademark board’s ruling noted yesterday – CEO Gusein Suleimanov is keen for everyone to know that, “in coming up with the name Potify [he] did not think of Spotify or anything associated with Spotify – the Spotify name did not come to mind when developing the name for Potify”.

So that’s alright then. Except, no. Because, Spotify says, the use of the Potify brand by US Software Inc is “diluting” its brand via both “blurring and tarnishment”. And surely trademark law should be ready and waiting to stop the blurring and tarnishment of a brand that has already been registered as a trademark?

It’s US Software Inc’s bid to also register its Potify brand as a trademark that sparked the current dispute. When considering claims that one company’s proposed trademark would dilute that of another, the first thing the trademark board needs to consider is the similarity between the two companies’ brands. Although, needless to say, that didn’t take much time.

Employing some very fine observational skills, the judge hearing the case noted: “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, applicant merely deleted the leading ‘S’ from opposer’s mark”.

Next, the judge needs to consider how famous and distinct the Spotify brand is, before tackling the all important question of what impact the existence of a Potify trademark would have on the pre-existing Spotify trademark.

Said the judge in his ruling: “There is no question that Spotify is as famous as marks come, that Spotify goods and services are widely used and recognised 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 arguing against Spotify’s objections to his company’s trademark application, Suleimanov claimed that – if he was influenced by anything when coming up with the Potify brand – it was Shopify not Spotify. And, in responding to the trademark board’s decision, Suleimanov’s legal rep also noted all the other ‘otify’ companies.

“If Potify cannot be registered, then other marks ending in ‘otify’ – like Clotify, Votify, Notify and Plotify – shouldn’t be registered either”, attorney Kevin Davis told Law360, yet those marks are all registered. “The board’s decision was clearly based on the ‘fame’ of the Spotify brand”, he added, “which resulted in an overly broad protection of their brand”.