SPOTIFY v. POTIFY | Can the mark POTIFY conjure up mark SPOTIFY? Here’s detailed analysis of US Patent and Trademark Office decision in trademark clash

United States Patent and Trademark Office: Cataldo, Adlin and Lebow, Administrative Trademark Judges, decided whether SPOTIFY is entitled against dilution by blurring under 15 U.S.C Section 1125(c).

Applicant U.S Software Inc. sought registration of POTIFY, in standard character and stylized with a design 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.

Further, the applicant also sought the registration of the standard character version of the mark for:

clothing, namely, shirts, tops, t-shirts, hoodies, headwear, shorts, in International Class 25;

providing consumer information in the field of medical marijuana dispensary inventories and locations; providing links to web sites of others featuring consumer information on medical marijuana inventories and locations; providing a web site featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; providing consumer information regarding medical marijuana dispensaries, inventories and locations, in International Class 35; and 

computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking in the field of medical marijuana; providing a web site featuring temporary use of non-downloadable software for providing medical and healthcare services, scheduling of medical and healthcare services, in International Class 42.

Opposer Spotify AB alleged prior common law rights in and registration of SPOTIFY, in standard characters.

Further, the opposer alleged that the use of the applicant’s marks would be likely to cause confusion with and dilute the opposer’s mark under Sections 2(d) and 43(c) of the Trademark Act, 15 U.S.C § 1052(d) and 1125(c).

Analysis and Discussion

There is no dispute that Opposer’s SPOTIFY mark is distinctive, both inherently, and by acquisition as a result of widespread use and consumer recognition. Conceptually, it is a coined, fanciful term. It is registered on Principal Register without a claim of acquired distinctiveness and is therefore presumed distinctive.

As for whether the mark is sufficiently “famous” to be entitled to protection against dilution, Trademark Office must determine whether it “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”

Advertising and Publicity


Opposer “promotes its products and services under the SPOTIFY mark to a wide variety of consumers, including across age groups and across all geographic regions in the U.S.

 It advertises in well known national publications and has exclusive podcast partnership deals with famous celebrities.

Less conventionally, Opposer has engaged consumers’ imaginations with marketing efforts such as the “President of Playlists” job posting after President Obama expressed a desire to work for Opposer (itself a form of free advertising and publicity). This marketing effort was so successful and engaging that it became “the number one trending moment on Twitter”. Id. at 11 (Sauvaget Dec. ¶ 34). The attention this episode received on Twitter strongly suggests that many Americans who listen to music in analog format or not at all were exposed to the SPOTIFY mark.

Sales of Goods and Services offered under the SPOTIFY mark


It was noted that in 2015, before the applicants’ first use of its POTIFY mark, opposer had more monthly SPOTIFY users than most U.S. States had residents.

Evidence was significant, persuasive and corroborative of the advertising and publicity evidence. Not only have many Americans been exposed to the SPOTIFY mark, but a large percentage of Americans are users of or subscribers to opposer’s SPOTIFY goods and services.

 Actual recognition of the mark


Significantly, it was recorded that SPOTIFY had more web “hits” than a number of other trademarks, including ROLEX, MCDONALD’s, AMERICAN EXPRESS, CHANEL and BARBIE.

Opposer’s “President of Playlists” marketing effort was so widely recognized that it was “the number one trending moment on Twitter and claimed the number one spot of Reddit.”

Hence, SPOTIFY is among the most widely recognized brands in the United States.

SPOTIFY is registered on the principal register


Adding to the above, it was stated that the SPOTIFY mark has been registered on the principal register in its broadest (standard character) form for almost 13 years.

SPOTIFY is famous


SPOTIFY is exceedingly famous and entitled to protection against dilution under 15 U.S.C. § 1125(c).

What does Dilution by blurring means?


Dilution by blurring is “an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”

It “occurs when a substantial percentage of consumers, on seeing the junior party’s mark on its goods, are immediately reminded of the famous mark and associate the junior party’s mark with the owner of the famous mark, even if they do not believe that the goods emanate from the famous marks’ owner.” N.Y. Yankees P’ship, 114 USPQ2d at 1509.

To consider whether the applicant’s use of its mark will likely cause dilution by blurring, this office considered:

  • Degree of similarity between applicant’s mark and opposer’s famous mark
  • Degree of inherent or acquired distinctiveness of Opposer’s mark
  • Extent to which opposer is engaging in the substantially exclusive use of its mark
  • Degree of recognition of opposer’s mark
  • Whether the applicant intended to create an association with opposer’s SPOTIFY mark
  • Any actual association between applicant’s mark and opposer’s mark

In the present case, the marks were strikingly similar and in fact, they share the letters P-O-T-I-F-Y with that being the entirety of the applicant’s standard character mark and the literal element of its other mark.

Even if the office presumes that Opposer’s mark will be perceived as a reference to the word “spot”, and that applicants will be perceived as a reference to the word “pot”, because the marks are so similar in appearance and sound, the marks will engender similar commercial impressions.

Findings

  • It was found that the marks were highly similar in their entireties, and that applicant’s mark will “trigger consumers to conjure up” opposer’s famous mark, and this weighs in favour of finding dilution by blurring.
  • Opposer’s mark is highly distinctive
  • Opposer’s use of SPOTIFY is substantially exclusive
  • SPOTIFY mark is widely recognised in the United States
  • Applicant apparently intended to create an association with Opposer’s SPOTIFY mark

Since the marks are so similar in how they look and sound and in their structure, cadence and essential nature, the applicant’s mark will cause consumers to “conjure up” the opposer’s famous mark and associate the two.

although we need only find likely dilution, we find it inevitable that POTIFY will diminish [SPOTIFY’s] distinctiveness

Decision

Registration of applicant’s mark in both ‘717 and ‘185 Application was refused in view of the above. [Spotify AB v. U.S. Software Inc., Opposition Nos. 91243297 and 91248487, mailed on 10-1-2022]

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