Spotify has won a legal ruling blocking a smaller company from securing a federal trademark on “Potify” – the name of an online platform that connects users to marijuana dispensaries.
A federal tribunal ruled Monday that the proposed trademark, sought by a company called U.S. Software Inc., was so “strikingly similar” to Spotify’s famous name that granting it would likely “dilute” the strength of the music streamer’s brand.
“Because the marks are so similar in how they look and sound, and in their structure, cadence and essential nature, applicant’s mark will cause consumers to conjure up [Spotify]’s famous mark, and associate the two,” wrote the Trademark Trial and Appeal Board, a court-like body within the federal trademark office that resolves such disputes over look-alike brand names.
Potify, which offers both a website and a smartphone app, bills itself as the “easiest way to find the best medical marijuana in seconds.” The service allows users to search types of cannabis and connect with a local dispensary to have it delivered.
The company applied to register its name as a federal trademark in 2017, but Spotify quickly filed a case aimed at blocking the application. Repped by Silicon Valley law firm Wilson Sonsini Goodrich & Rosati, the streaming giant argued that consumers would think the pot service was somehow linked to Spotify, or at the very least that it would dilute the distinctiveness of its name.
In Monday’s decision, the board sided with Spotify’s arguments, blocking the registration of the Potify trademark. It ruled that Spotify is “among the most widely recognized brands in the United States” – and that Potify’s Spotify-listening co-founders had likely deliberately chosen a name that sounded similar.
“It defies logic and common sense that a longtime, frequent Spotify user, and another longtime Spotify user, jointly came up with the highly similar name ‘Potify’ without intending to, or knowing that other users of the incredibly popular Spotify service would, associate Potify with Spotify,” the board wrote.
Monday’s ruling doesn’t prevent Potify from continuing to use the name; it merely means the company could not secure its own trademark registration to it. But TTAB cases are often the prelude to trademark infringement lawsuits, and the board’s ruling this week would give Spotify plenty of ammo to bring such a case.
An attorney for Potify did not return a request for comment on the board’s decision. The ruling can be appealed to a federal court.