Spotify AB (“Spotify”) has prevailed in two opposition court cases it introduced towards the registrations of 2 POTIFY marks, that have been carried out for through U.S. Device Inc. (“U.S. Device”), in connection to its Potify platform. In step with U.S. Device, Potify is “a backend device platform designed for criminal marijuana dispensaries to marketplace and promote their merchandise.”
In strengthen of its oppositions, Spotify made 3 claims towards that the POTIFY marks, specifically, probability of misunderstanding with the SPOTIFY mark, dilution through blurring of the SPOTIFY mark, and dilution through tarnishment of the SPOTIFY mark. The Trademark Trial and Attraction Board (TTAB) dominated in Spotify’s prefer best taking a look on the dilution through blurring flooring.
Dilution through blurring
In step with Phase 43(c) of the Trademark Act:
“the landlord of a well-known mark this is unique, inherently or thru received strong point, might be entitled to an injunction towards someone else who, at any time after the landlord’s mark has change into well-known, commences use of a mark or industry identify in trade this is prone to motive dilution through blurring … of the well-known mark, irrespective of the presence or absence of tangible or most likely confusion, of pageant, or of tangible financial damage.” 15 U.S.C. § 1125(c)
The TTAB has established 4 necessities for a hallmark proprietor to exhibit probability of dilution through blurring. Within the context of the oppositions to hand, Spotify needed to display that (1) it owns a well-known mark this is unique, (2) U.S. Device is the use of a mark in trade that allegedly dilutes Spotify’s well-known mark; (3) U.S. Device’s use of its mark started after Spotify’s changed into well-known; and (4) U.S. Device’s use of its mark is prone to motive dilution through blurring.”
SPOTIFY’s strong point and reputation
The TTAB had no downside discovering that the SPOTIFY mark is unique, “each inherently, and through acquisition on account of fashionable use and client popularity.” It additional famous that “this can be a coined, fanciful time period.”
At the factor of whether or not Spotify’s mark is known, the TTAB seemed on the statutory elements defined in 15 U.S.C. § 1125(c)(2)(A), specifically, Spotify’s promoting and gross sales, the level of tangible popularity of the mark, and the SPOTIFY mark’s USPTO registration. Once more, the TTAB has no downside discovering that, “through any and all measures, SPOTIFY is exceedingly well-known.”
U.S. Device claimed that the SPOTIFY mark has no longer change into well-known by the point it first used the POTIFY mark, this is, January 1, 2017. The TTAB pushed aside this declare, not anything that “the massive choice of pre-2017 Spotify [monthly active users] by myself” justified any such discovering.
Probability of inflicting SPOTIFY’s dilution through blurring
Spotify’s allegation of dilution was once in itself enough to fulfill the second one requirement. Discovering that the usage of POTIFY was once prone to motive dilution through blurring, the TTAB once more checked out statutory elements, this time specified by 15 U.S.C. § 1125(c)(2)(B)(i-vi).
First, it famous that the POTIFY marks “are extremely identical of their entireties.” 2d, in regards to SPOTIFY’s strong point, the TTAB indicated that U.S. Device “does no longer dispute that SPOTIFY is extremely unique,” whilst clarifying that it however “is one of the maximum extremely identified marks in the USA.”
Whilst U.S. Device didn’t deal with Spotify’s unique use of SPOTIFY, the TTAB highlighted that the corporate “enforces its rights within the SPOTIFY mark vigorously, together with thru call for letters, and area identify and [TTAB] court cases.” Addressing the problem of popularity, the TTAB opined that “few marks are as widely known in the USA as SPOTIFY.”
The TTAB then grew to become to the problem of whether or not U.S. Device meant to create an affiliation between POTIFY and SPOTIFY. Making an allowance for U.S. Device’s declare that “its determination to undertake the POTIFY mark had not anything to do with [Spotify],” the TTAB mentioned this was once “onerous to consider,” noting amongst different elements the truth that U.S. Device’s principals had been Spotify customers.
This situation gives a couple of courses for companies, and no longer simply hashish ones. First, it underscores the significance of registering logos. Whilst Spotify has not unusual legislation rights to SPOTIFY (and in truth alleged them within the court cases), the registration reinforced its claims, from time to time being determinative within the TTAB’s concerns of statutory elements.
2d, the TTAB explicitly highlighted the fanciful nature of the SPOTIFY mark. Trademark strong point is a spectrum, with generic and descriptive marks at one finish, and fanciful marks on the different. Fanciful marks have the most efficient probability of being registerable and enforceable. Be inventive and don’t disregard trademarking fundamentals.
In the meantime, Potify’s destiny displays there’s a prohibit to how a lot traction companies can get from gag names. Those could be successful for T-shirt designers, however isn’t the bedrock on which to construct a emblem. Actually, as those court cases display, such names can turn out counterproductive, particularly when the meant butt of the shaggy dog story is a no-nonsense corporate like Spotify.