Spotting a Potty
In Brief: A famous trademark doesn’t have to tolerate a trademark parody.
Here’s What Happened:
Spotify, the music streaming service, was launched in 2011. It promotes its products and services under the “Spotify” mark to a wide variety of consumers, including across all age groups and across all geographic regions in the U.S. Spotify advertises in national publications, including Rolling Stone, Vanity Fair, The New York Times Billboard, and The Washington Post, as well as on major TV and radio networks. By 2015, Spotify had more monthly users than most US states had residents.
Enter U.S. Software, Inc. In 2015, U.S. Software filed an application to register the mark “Potify” and a design mark for a mobile application that would facilitate access to marijuana.
Spotify filed two oppositions to the registration of U.S. Software’s trademark. Spotify argued that because both the Spotify mark and the Potify mark are mobile applications, customers would be confused and believe that Spotify was now in the business of providing access to marijuana. Spotify also argued that because it has a famous mark, the Potify mark causes dilution.
Potify defended the oppositions saying that the targeted customers were different from Spotify and that there are numerous trademarks that use “ify” such as “Weedify”.
The Trademark Trial and Appeal Board (TTAB) first determined that Potify seemed to be directed towards more than the trade of medical marijuana. It also seemed to promote being a conduit between drug dealers and drug users. Based on this assessment, Spotify’s dilution argument was strong enough to carry the day. A claim of dilution is reserved for famous marks only. There are two types of dilution: (1) blurring and (2) tarnishment. Dilution impairs the distinctiveness of the famous mark because consumers seeing the junior mark immediately associate it with the famous mark. The TTAB stated that the Spotify mark was famous because it (1) had existed for a long time reaching large geographic areas; (2) heavily advertised its services; (3) had significant name recognition; and (4) was a registered trademark.
Potify caused tarnishment of the Spotify mark by association with the drug trade.
Spotify’s oppositions were sustained.
Why You Should Know This: When choosing a trademark, it’s best to stay away from a mark that evokes a famous trademark. Especially if the mark will tarnish the famous mark.
Case Information: Spotify AB v. U.S. Software, Inc., No. 91248487 (TTAB, 2022).