Here comes another case where a brand is unhappy with the registration of another brand’s trademark registration and challenges it. A cannabis dispensary software company made an attempt to register the trademark ‘Potify’ which attracted the ire of a famous music streaming platform named Spotify. The case came back to the drawing board for final decision. The US Trademark Trial and Appeal Board (TTAB) rejected the registration application for ‘Potify’ and decided in favor of Spotify. According to their opinion, “Potify was intended to be that software also having scope for selling clothing merch, providing consumer information in the field of medical marijuana dispensary inventories and locations, forums, and more.”
On the other hand, Spotify had some other ideas and the reason behind it is easy to track. The ‘Potify’ branding as shown in the document is phonetically, visually, and conceptually similar to Spotify’s. Potify people simply omitted the ‘S’ and circle logo and decided to start it 'p' in a lower-case. The case trying to get approval for ‘Potify’ trademark application was represented by attorney Kevin Davis and Spotify by Adlin.
The company also provided a big bunch of evidence supporting why US Software Inc. should not get away with it at any cost that also included the fact of holding the mark ‘Spotify’ for almost 13 years and now it has attained the status of the well-known mark. The argument was concluded stating that allowing the application would lead to dilution of the Spotify brand and the company would also incur a loss in its distinctiveness in association with ‘Potify’
Administrative Law Judge Michael B Adlin agreed and wrote: “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 the opposer points out, the applicant merely deleted the leading ‘S’ from the opposer’s mark. The logos are strikingly similar.”
Interestingly, US Software Inc. CEO Gusein Suleimanov and COO Ivan Suslov still seemed to claim that they coined the name Potify and they did not think of Spotify or anything associated with Spotify in any manner and the Spotify name was not even there in their mind while coining the name Potify. Such cases put a light on elements that make any mark unique and distinctive. Similarly, these cases will an addition to the list of precedents helping in deciding any mark as phonetically similar and unfit for registration.