It's back to the drawing board for a cannabis dispensary software company after an attempt to register the trademark "Potify" attracted the ire of music streaming platform Spotify.
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...
The software also had scope for selling clothing merch, "providing consumer information in the field of medical marijuana dispensary inventories and locations", forums, and more.
Spotify, however, had other ideas – and it's easy to see why. The "Potify" branding as shown in the document looks pretty much like Spotify's, with the "S" and circle logo omitted, and starting with a lower-case "p".
The company provided a bunch of evidence for why "US Software Inc" shouldn't get away with it, including that it has held the mark for 13 years and is a "famous" name, but the argument mostly came down to "dilution" of the Spotify brand – or the loss of its distinctiveness in association with "Potify".
Administrative Law Judge Michael B Adlin agreed, writing: "The only difference between applicant's mark POTIFY and opposer's mark SPOTIFY is that opposer's starts with an 'S,' immediately before the shared letters P-O-T-I-F-Y. In other words, as opposer points out, applicant merely deleted the leading 'S' from opposer's mark."
He added that the logos were "strikingly similar."
Interestingly, US Software Inc CEO Gusein Suleimanov and COO Ivan Suslov claimed that in coming up with the name, they "did not think of Spotify or anything associated with Spotify" and "the Spotify name did not come to mind when developing the name for Potify."
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Nonetheless, Adlin was blunt: "Although we need only find likely dilution, we find it inevitable that POTIFY 'will diminish SPOTIFY's distinctiveness.'"
The "Potify" guys were disappointed with the outcome. Speaking to legal newswire Law360 (paywall), their lawyer, Kevin Davis, said: "The term 'pot' has a deeply rooted history in the United States as a colloquial term for marijuana. The term 'pot' and the mark 'POTIFY' immediately conjure up the history, politics and emotions associated with marijuana in the United States, not an image of Spotify."
He claimed that Spotify's opposition to the mark was "contradictory," pointing to Spotify's range of cannabis-related music and podcasts, and that other similar brand names ("Clotify, Votify, Notify and Plotify") had been successfully registered as trademarks.
So we have a US Software Inc desperately in need of a new name. We're sure the Register readership can help them out. Chuck your suggestions in the comments. ®