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.