As reported here, the owner of the trademark SPOTIFY successfully opposed the registration of two trademarks involving the word mark POTIFY. Here are a few of the legal lessons we learned.

A registered trademark is not needed to file a USPTO Opposition

The U.S. Patent and Trademark Office routinely publishes proposed trademarks for review by the public. If a member of the public is concerned that a trademark might infringe on an existing trademark owned by that person/company, that party can file what is called an “Opposition.” That is a legal proceeding filed with the Trademark Trial and Appeal Board to oppose registration.

Importantly, a third party does NOT need to own a registered trademark to file an Opposition. SPOTIFY is owned by a Swedish company, and the Opposition was filed based on U.S. common law trademark rights. That is, SPOTIFY is not a registered trademark in the United States, but has a legal trademark based on common law rights.

An unregistered trademark can be deemed famous

As noted, SPOTIFY was successful in preventing POTIFY from being registered as a trademark. SPOTIFY is a well-known music website. More specifically, the trademark relates to “computer software for use in the delivery, distribution and transmission of digital music and entertainment-related audio, and multimedia content, in International Class 9.” The web-based service has been around long enough and is popular enough that the SPOTIFY trademark was deemed “famous,” even though the trademark is not registered in the United States. That fact was very important in the reasoning of the Trial and Appeal Board.

For trademark tarnishment claims, cannabis is still an illegal drug

POTIFY is also a web-based information service. However, the content provided focuses on medical marijuana/cannabis dispensaries and doctors’ offices. Like SPOTIFY, POTIFY applied for registration for its trademark, which is mainly associated with Class 9.

In its Opposition, SPOTIFY claimed that POTIFY should be denied because it was confusingly similar to SPOTIFY. SPOTIFY also claimed that, as a cannabis-related website, POTIFY would damage and tarnish its famous SPOTIFY trademark. In other words, since cannabis is still illegal at the federal level (even for medical use), cannabis is still a banned and criminal substance and can form the basis of a tarnishment claim. SPOTIFY argued that its trademark would be tarnished by being associated with an illegal drug.

The trademark Class matters

As noted, in the end, the Trial and Appeal Board gave the “win” to SPOTIFY. The fact that the trademarks were in the same Class mattered. For example, if POTIFY was all about cooking pots, there would have been less danger of consumer confusion (and no argument about tarnishment). But, as the Board stated: “Because the marks SPOTIFY and POTIFY are used for software products that perform analogous functions, and are so similar in appearance and sound, their commercial impressions are similar even if consumers take different meanings from SPOT and POT.”

Contact The Cannabis Trademark Attorneys At Revision Legal

For more information, contact the experienced Cannabis Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Understanding Trademark Opposition Proceedings at the USPTO

The SPOTIFY v. POTIFY decision from the Trademark Trial and Appeal Board (TTAB) offers a clear window into how opposition proceedings work and why they matter. For any business that is building a brand, understanding the opposition process — both how to use it offensively and how to defend against it — is essential trademark strategy.

The Opposition Process: A Practical Overview

When the USPTO approves a trademark application for publication, it appears in the Official Gazette. During the 30-day publication window, any party who believes they would be damaged by the registration can file a Notice of Opposition with the TTAB. The opposition is essentially a trial proceeding conducted before the TTAB, with discovery, briefing, and often oral argument. The TTAB is not a court — it is an administrative body — but its decisions carry significant legal weight and are appealable to federal district court or the U.S. Court of Appeals for the Federal Circuit.

The SPOTIFY case illustrates two important strategic points. First, an opposition can be filed based on common law trademark rights — no registration required. SPOTIFY, owned by a Swedish entity, had never obtained a U.S. trademark registration. Yet its long-standing use of the mark in U.S. commerce gave it sufficient common law rights to stand as an opposer. For businesses that have been using a mark without registering it, this is both a warning and an opportunity: you may have rights you did not know you had, but you are also exposed to oppositions from parties with stronger registered rights.

Likelihood of Confusion: The Core Test

Most trademark oppositions — and most infringement claims — turn on the likelihood-of-confusion analysis. Courts and the TTAB apply the multi-factor test established in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), commonly called the DuPont factors. The 13 DuPont factors include the similarity of the marks in appearance, sound, and meaning; the similarity of the goods and services; the channels of trade; the sophistication of consumers; and the fame of the prior mark.

In the SPOTIFY case, the Board found that SPOTIFY and POTIFY were highly similar in appearance and sound — both ending in the distinctive “-OTIFY” suffix — and that both marks were used in connection with software products performing analogous functions in the same International Class. The overlap in both the marks themselves and the class of goods made the confusion finding straightforward. The lesson for applicants is clear: if your mark rhymes with or visually resembles a famous mark in the same commercial space, expect an opposition.

Trademark Dilution and Tarnishment

In addition to likelihood of confusion, SPOTIFY raised a tarnishment claim under the federal trademark dilution statute, 15 U.S.C. § 1125(c). Tarnishment occurs when a junior mark harms the reputation of a famous senior mark by associating it with something unsavory, illegal, or disreputable. The SPOTIFY Board agreed that associating a famous music platform with a cannabis dispensary directory — involving a substance still classified as a Schedule I controlled substance under federal law — could tarnish SPOTIFY’s brand.

The tarnishment theory is particularly potent for cannabis-adjacent businesses. Even as state-level cannabis legalization expands, federal law remains unchanged. This creates a peculiar legal landscape where a cannabis business may be lawfully operating under state law but still face federal trademark complications. Because the USPTO operates under federal law, cannabis-related marks face heightened scrutiny and, as this case shows, are vulnerable to tarnishment claims from holders of famous marks who do not want any association — however indirect — with federally illegal activity.

Monitoring and Policing Your Trademark

The SPOTIFY opposition would never have happened if SPOTIFY had not been monitoring the USPTO’s Official Gazette for potentially conflicting applications. Trademark monitoring is not a luxury — it is a core component of any serious trademark protection strategy. Once a trademark is registered, the owner has an obligation to police it. Failure to challenge infringers can, over time, weaken the mark and in extreme cases contribute to a finding of abandonment or genericide.

Monitoring services can track new USPTO filings, domain registrations, social media handles, and marketplace listings for marks that are confusingly similar to your own. When a potential conflict is identified, the question is whether to file an opposition (before registration), a petition to cancel (after registration), or a cease-and-desist letter (for common law or marketplace infringement). Each approach has different costs, timelines, and strategic implications. An experienced trademark attorney can assess which path makes the most sense for your particular situation.

If you are building a brand, launching a product, or facing a potential trademark conflict — including in the cannabis space — the trademark attorneys at Revision Legal are available to help. We advise on clearance searches, applications, oppositions, cancellation proceedings, and infringement disputes at every stage.