Spotify v. U.S. Software Inc.
Spotify v. U.S. Software Inc.
Spotify v. U.S. Software Inc.
Spotify AB
v.
U.S. Software Inc.
___
Applicant also seeks registration of the standard character version of the mark for:
Opposition Nos. 91243297 and 91248487
prior common law rights in and registration of SPOTIFY, in standard characters, for:
1 The standard character application, Serial No. 87530717 (the “’717 Application”), was filed
on July 17, 2017 under Section 1(a) of the Trademark Act, based on first use dates of January
1, 2017. The composite word and design mark application, Serial No. 87904185 (the “’185
Application”), was filed on May 2, 2018, also under Section 1(a) of the Act, based on the same
first use dates. Applicant acquired both applications by assignment from Easyrec, Inc. (Reel
6496/Frame 0720).
2
Opposition Nos. 91243297 and 91248487
As grounds for opposition, Opposer alleges that use of Applicant’s marks would be
likely to cause confusion with, and dilute (by blurring and tarnishment), Opposer’s
mark, under Sections 2(d) and 43(c) of the Trademark Act, 15 U.S.C. § 1052(d) and
1125(c). In its answers, Applicant denies the salient allegations in the notices of
opposition and asserts several “affirmative defenses” which are merely amplifications
of its denials.
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
Opposer introduced:
2Registration No. 3561218, issued January 13, 2009 under Section 66(a) of the Act, 15 U.S.C.
§ 1141f(a), based on International Registration No. 0921642; Sections 15 and 71 Declarations
accepted. Opposer also pleaded ownership of Registration No. 3564798, but that registration
was cancelled well before trial.
3
Opposition Nos. 91243297 and 91248487
3 Citations are to the record in the “parent” file in Opposition No. 91243297.
4 Each party submitted documents via NOR identified as “printouts from the Internet
showing” documents “produced by” the other party in response to a discovery request. In
considering these materials, we have kept in mind that there was no stipulation to introduce
documents produced in discovery. Under Trademark Rule 2.120(k)(3)(ii), an adverse party’s
produced documents are generally not admissible “except to the extent that they are
admissible by notice of reliance under the provisions of” Trademark Rule 2.122(e). Documents
printed from the Internet are not admissible by notice of reliance under Trademark Rule
2.122(e) unless the URL and date of printing are provided.
4
Opposition Nos. 91243297 and 91248487
Applicant introduced:
because Mr. Butler executed the declaration more than one year prior to trial.
Trademark Rule 2.121(a) (“No testimony shall be taken or evidence presented except
during the times assigned, unless by stipulation of the parties approved by the Board,
or upon motion granted by the Board, or by order of the Board.”); Robinson v. Hot
5 As indicated, the involved application files are already (and automatically) of record.
5
Opposition Nos. 91243297 and 91248487
Grabba Leaf, LLC, 2019 USPQ2d 149089 *3-4 (TTAB 2019), cancellation order
vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019).
“we simply accord the evidence whatever probative value it deserves, if any at all …
Ultimately, the Board is capable of weighing the relevance and strength or weakness
of the objected-to testimony and evidence in this specific case, including any inherent
limitations.” Hunt Control Sys. Inc. v. Koninkijke Philips Elecs. N.V., 98 USPQ2d
1558, 1564 (TTAB 2011). See also Grote Indus., Inc. v. Truck-Lite Co., LLC, 126
USPQ2d 1197, 1200 (TTAB 2018) (“We also remind the parties that our proceedings
are tried before judges not likely to be easily confused or prejudiced. Objections to
trial testimony on bases more relevant to jury trials are particularly unnecessary in
this forum.”) (citing U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1540
(TTAB 2006)); RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d
1801, 1804 (TTAB 2018); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468,
1478 (TTAB 2017) (quoting Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
USPQ2d 1477, 1479 (TTAB 2017)). We have kept Applicant’s objections in mind in
4, is also overruled. Ms. Sauvaget has “personal knowledge of the facts within this
6
Opposition Nos. 91243297 and 91248487
calling into question the exhibits or Ms. Sauvaget’s testimony about them.
TTABVUE 16), in which Ms. Sauvaget provides her legal and other opinions about
the ultimate merits of this case. 53 TTABVUE 4. The objection is unnecessary, and
relieve the decision maker of the burden of making his own ultimate conclusion on
the entire record.” Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926,
Both parties offer software, including mobile apps and related services, but they
operate in different fields. Opposer focuses on music and other digital content, while
A. Opposer
services for streaming music, podcasts, and other audio-video content.” It “launched
its business in the United States in 2011.” 36 TTABVUE 2, 4 (Sauvaget Dec. ¶¶ 3, 7).
Opposer is perhaps best known for its music streaming services, which allow users
to locate and stream music (or other content) from a large database of songs, albums
(and other content), using mobile and desktop applications for computers,
smartphones and other devices (including speakers, televisions and cars). Id. at 3, 20-
7
Opposition Nos. 91243297 and 91248487
While the specifics are mostly designated “Confidential,” and will therefore only
be discussed generally, Opposer has been incredibly successful. In fact, within a few
years of expanding to the United States, and before Applicant’s first use of its marks,
entire United States population. And, by 2020, the number of Opposer’s MAUs had
multiplied to a number that could not be attained absent a level of popularity and
(Sauvaget Dec. ¶ 9 and Ex. 5). Opposer’s SPOTIFY mobile apps are “consistently”
among “the top apps downloaded in the Apple App Store or Google Play Store.” 36
These are far from the only indicia that the pleaded SPOTIFY mark is widely
recognized and exceedingly famous in the United States. Opposer has 23.3 million
“likes” on Facebook, 5.3 million followers on Instagram, 3.5 million Twitter followers,
(Sauvaget Dec. ¶ 23); 31 TTABVUE 12, 24, 47. Opposer has advertised in publications
including ROLLING STONE, VANITY FAIR, THE NEW YORK TIMES, BILLBOARD and THE
Opposer’s billboards are large and often feature popular recording artists from the
8
Opposition Nos. 91243297 and 91248487
Id. at 7, 111-115 (Sauvaget Dec. ¶ 25 and Exs. 22-24). Opposer advertises on major
television broadcast and cable networks including ABC, NBC, CBS, FOX and ESPN,
as well as national radio networks including Westwood One and Urban One. Id. at 7
(Sauvaget Dec. ¶ 26). Opposer promotes its SPOTIFY brand at major live events
including Coachella, South by Southwest, the Consumer Electronics Show and the
9
Opposition Nos. 91243297 and 91248487
Country Music Association’s CMA Fest. Id. at 8 (Sauvaget Dec. ¶ 27). It also has
6 Opposer provided what Ms. Sauvaget referred to in her declaration as total (worldwide)
“advertising and marketing expenditure totals since 2011,” and what is labeled in an
10
Opposition Nos. 91243297 and 91248487
Some of Opposer’s promotional efforts have been both unique and highly
successful. For example, when President Obama joked that he hoped to work for
Opposer after leaving the White House, “Spotify created a job post in January 2017
titled ‘President of Playlists’ with credentials that could only be met by President
Obama.” Id. at 11 (Sauvaget Dec. ¶ 34). This marketing tactic became “the number
one trending moment on Twitter, and claimed the number one spot on Reddit. In
under a week, Spotify received 14 million visits to its website and over 900 job
applications.” Id. In addition, recording artists such as Taylor Swift, Lorde, The
Weeknd, Lady Gaga, Kendrick Lamar and The Black Keys engage with their fans by
making Spotify playlists, and Michelle Obama, Joe Rogan and Kim Kardashian West
“have signed exclusive podcast partnership deals with Spotify.” Id. at 13 (Sauvaget
Dec. ¶¶ 41-42).
Opposer’s SPOTIFY brand was ranked No. 92 in Interbrand’s list of the “Best
Global Brands 2019.” Id. at 15, 367-449 (Sauvaget Dec. ¶ 47 and Exs. 81-84). The
same year, Prophet’s “Brand Relevance Index” for the United States ranked
SPOTIFY No. 2, behind APPLE and ahead of ANDROID, with DISNEY ranking No.
illustrative chart as “Total Advertising and Sales Spend.” 36 TTABVUE 8, 9 (Sauvaget Dec.
¶ 31). We have not focused on these figures because those that predate Applicant’s first use
date are not specific to the United States. See Double J of Broward Inc. v. Skalony Sportswear
GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991) (“Information concerning applicant’s foreign
activities, including foreign trademark applications and/or registrations, is not relevant to
the issues in an opposition proceeding.”); Canovas v. Venezia 80 S.R.L., 220 USPQ 660, 662
(TTAB 1983) (claim of fame in France and existence of pending U.S. application based on
foreign registration insufficient to establish that fame extended to U.S.).
11
Opposition Nos. 91243297 and 91248487
5 and GOOGLE No. 13.7 Id. An NPR article following Opposer’s 2018 initial public
offering reported that “the music streaming service Spotify is now worth around $25
billion, making it the largest music company in the world.” 36 TTABVUE 433.
United States consumers are aware of the SPOTIFY brand. 37 TTABVUE 14 and 39
Disc. Tr. 71); 46 TTABVUE 25. Media reports corroborate this evidence, often
referring to Spotify as “well known.” 29 TTABVUE 121, 125, 128, 132, 135, 139, 145,
154. A May 7, 2015 CHRISTIAN SCIENCE MONITOR article goes further, stating “Spotify
is one of the most popular streaming music services on the planet.” 29 TTABVUE
name” in September 2016. Id. at 148. In October 2014, ANDROID HEADLINES ranked
Spotify the second best streaming radio app for Android, also referring to the
company as a “household name” which is “known around the world.” Id. at 154.
Opposer believes that because “pot” is “a colloquial name for marijuana,” an illegal
drug under federal law, “consumers will associate the POTIFY mark with the
promotion of marijuana use,” and with the SPOTIFY mark. According to Opposer,
any “association of marijuana-related goods and services with the SPOTIFY mark is
likely to tarnish the SPOTIFY mark.” 36 TTABVUE 16 (Sauvaget Dec. ¶ 52). In fact,
Opposer prohibits a number of its promotional partners from displaying “the Spotify
7Prophet defines “relentlessly relevant brands” as those that “engage, surprise and connect
….” 36 TTABVUE 393.
12
Opposition Nos. 91243297 and 91248487
regulations.” 39 TTABVUE 71, 99, 125, 154, 174, 189. This includes “illegal drug use
or any other unlawful activity.” 45 TTABVUE 24. Opposer “does not permit
including ads that promote the sale or use of marijuana … [Opposer’s] internal
guidelines for brand marketing prohibit references to marijuana and other drug
content.” Id. at 24, 122, 316 (Opposer’s response to Interrogatory No. 10 and Opp.
On the other hand, Opposer “offers and promotes certain music, podcast and video
content related to marijuana through its website and mobile app,” including “podcasts
that discuss marijuana-related topics such as the legalization of cannabis, the science
response to Interrogatory No. 2). In addition, Opposer “creates video content related
marijuana-infused meals hosted by various artists including Ty Dolla $ign and City
Girls as part of Spotify’s ‘Rap Caviar’ playlist. Spotify plans to continue use of the
B. Applicant
13
Opposition Nos. 91243297 and 91248487
designed for legal marijuana dispensaries to market and sell their products.” Id.
(Suleimanov Dec. ¶¶ 6, 7). Mr. Suleimanov testified that as with Applicant’s other
systems, the POTIFY platform is only sold “to legal marijuana dispensaries and not
does not sell any products or services to any customers or patients of the legal
transactions between the dispensary and patient or customer other than providing
There is no dispute over when Applicant began using POTIFY for its identified
software and related services. Applicant asserts in its Trial Brief that “the date of
first use for the POTIFY Marks” is January 1, 2017. 52 TTABVUE 28. Opposer, in its
Moreover, Mr. Suleimanov admits that dispensaries are “able to create a mobile
dispensary are able to view the dispensary’s menu, place orders online or via the
8 Under federal law, there are no legal marijuana dispensaries. The references to “legal”
marijuana dispensaries in this decision refer only to Applicant’s characterizations in
testimony, not to any conclusion as to the legality of marijuana dispensaries.
14
Opposition Nos. 91243297 and 91248487
using the Potify platform.” Id. (Suleimanov Dec. ¶ 11). As Mr. Suslov put it:
applications or website use the Potify platform.” 44 TTABVUE 3 (Suslov Dec. ¶ 8).
The record includes many examples showing that Applicant’s POTIFY app is at
“Your MMJ [medical marijuana] Guide,” and reveals that the app offers “featured
32 TTABVUE 80, 157 (Suslov Disc. Tr. 45 and Ex. 6). Marijuana dispensaries promote
the POTIFY app and website (“potify.net”) as “a more relaxing way to order” online,
and to have marijuana “ready within minutes for you to pick up”:
15
Opposition Nos. 91243297 and 91248487
Id. at 160.
which indicates that Applicant “is an online ordering platform and community for
retailers,” and that Applicant has “helped thousands of patients and customers
order their favorite products from their preferred dispensary or delivery service”:
16
Opposition Nos. 91243297 and 91248487
Id. at 166 (emphasis added). Applicant’s Instagram page similarly states that “Potify
is the quickest way to access the best medical marijuana via your mobile device,” and
the Google Play listing for Applicant’s POTIFY app includes essentially the same
In fact, Apple removed the POTIFY app from its App Store precisely because
53 (Suleimanov Disc. Tr. 43). When asked whether the POTIFY platform is used “in
the contrary, individual consumers have interacted extensively with the POTIFY
app, with Mr. Suleimanov testifying that the app has “almost a million active users.”
Id. at 54 (Suleimanov Disc. Tr. 44). And, when asked in an interrogatory to identify
the products and services Applicant offers under the POTIFY mark, Applicant
Interrogatory No. 6). Similarly, during its discovery deposition under Fed. R. Civ. P.
30(b)(6), Applicant confirmed that the “app allow[s] individuals to order from the
businesses that [Applicant has] sold [its] software to.” Id. at 67 (Suslov Disc. Tr. 32).
In any event, Mr. Suleimanov became aware of Opposer in the Fall of 2012, and
began using the service regularly in late 2014 or early 2015. Id. (Suleimanov Dec.
In 2014, Applicant wanted a name “that referenced being used in the marijuana
industry,” and “came up with the name POTIFY” after considering and rejecting the
Applicant selected POTIFY “as there was no other company operating with that
18
Opposition Nos. 91243297 and 91248487
name.” Id. (Suleimanov Dec. ¶ 56). “In coming up with the name ‘Potify,’ [Suleimanov]
did not think of Spotify or anything associated with Spotify,” and “[t]he Spotify name
did not come to mind when developing the name for Potify.” Id. at 10 (Suleimanov
Dec. ¶¶ 60-61). Mr. Suslov testified similarly, claiming that “[i]n coming up with the
name” POTIFY, he “did not think of Spotify or anything associated with Spotify,” and
“did not intend to be associated with Spotify or anything affiliated with or related to
Spotify.” 44 TTABVUE 4 (Suslov Dec. ¶¶ 23, 25). According to Mr. Suslov, the
POTIFY mark “comes from ‘Pot’, a common pseudonym for marijuana, with the fancy
suffix ‘-IFY,’ and means that marijuana can be found.” Id. at 6 (Suslov Dec. ¶ 27).
platform to Shopify, and testified that Shopify is “the reason why we picked [the
Applicant wanted to convey “being in the weed industry and, like, marketplace. And
Shopify played a huge role in that. Like, we want to be Shopify … Like we’d been
thinking about being a Shopify on Amazon.” Id. at 72 (Suleimanov Disc. Tr. 62).
case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
9 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,
our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain
equally applicable. Chutter, Inc. v. Great Mgmt. Grp., 2021 USPQ2d 1001 at *10 n.39 (TTAB
2021) (citing Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388 at *2
(TTAB 2020)).
19
Opposition Nos. 91243297 and 91248487
2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 125-26 (2014)). A party in the position of plaintiff
may oppose registration of a mark when doing so is within its zone of interests and it
mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at * 6-7
(Fed. Cir. 2020) (holding that the test in Lexmark is met by demonstrating a real
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000) (registration establishes “standing”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC,
90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is
damaged …” where opposer alleged likelihood of confusion). Once Opposer has proven
its entitlement to a statutory cause of action on one pleaded ground, it has established
its entitlement for any other ground. Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012)).
IV. Dilution
(Opposer’s ACR Brief at 25). To prevail, it must show that: (1) it owns a famous mark
20
Opposition Nos. 91243297 and 91248487
that is distinctive; (2) Applicant is using a mark in commerce that allegedly dilutes
Opposer’s famous mark; (3) Applicant’s use of its mark began after Opposer’s became
famous; and (4) Applicant’s use of its mark is likely to cause dilution by blurring or
tarnishment. N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497,
1502 (TTAB 2015) (quoting Coach Servs., 101 USPQ2d at 1723-24). Here, we find
dilution by blurring, and therefore need not reach whether use of Applicant’s mark is
Sock It to Me, Inc. v. Fan, 2020 USPQ2d 10611 at *10 (TTAB 2020). Applicant does
against dilution, we must determine whether it “is widely recognized by the general
services of the mark’s owner.” N.Y. Yankees P’ship, 114 USPQ2d at 1502 (quoting 15
21
Opposition Nos. 91243297 and 91248487
15 U.S.C. § 1125(c)(2)(A).
Opposer’s mark has enjoyed extensive publicity since it was introduced to the
by Opposer itself and its many promotional partners. The advertising and publicity-
Opposer “promotes its products and services under the SPOTIFY mark to a wide
variety of consumers, including across age groups (from younger users to older
listeners) and across all geographic regions in the U.S. (from West, Northwest,
Midwest, South and others).” 36 TTABVUE 4 (Sauvaget Dec. ¶ 11). Opposer also
advertises in well known, national publications such as THE NEW YORK TIMES, THE
WASHINGTON POST, VANITY FAIR and ROLLING STONE, as well as all of the major
broadcast television networks, and many cable television and radio networks. It also
advertises itself in connection with, and gains publicity from, several nationally
exposes fans of those programs to the SPOTIFY mark, even if those fans are not
celebrities including Michelle Obama, Joe Rogan and Kim Kardashian West, three
22
Opposition Nos. 91243297 and 91248487
quite different people whose partnership with Opposer likely exposed a variety of
Americans, including many who do not stream music, to the SPOTIFY mark. Id. at
13 (Sauvaget Dec. ¶¶ 41, 42). Less conventionally, Opposer has engaged consumers’
imaginations with marketing efforts such as the “President of Playlists” job posting
after President Obama expressed a desire to work for Opposer (itself a form of free
advertising and publicity). This marketing effort was so successful and engaging that
it became “the number one trending moment on Twitter.” Id. at 11 (Sauvaget Dec.
¶ 34). The attention this episode received on Twitter strongly suggests that many
Americans who listen to music in analog format or not at all were exposed to the
SPOTIFY mark.10
Measured by the number of users who “play at least one stream in a 30-day
window,” 36 TTABVUE 4 n.1, Opposer’s sales of goods and services offered under the
SPOTIFY mark were quite significant prior to Applicant’s first use of its mark. 37
TTABVUE 4 (Sauvaget Dec. ¶ 9). In fact, in 2015, before Applicant’s first use of its
POTIFY mark, Opposer had more monthly SPOTIFY users than most U.S. states had
residents.11 Moreover, Opposer currently has several times as many monthly users
10As explained in footnote 5, we have not focused on Opposer’s chart of its worldwide “Total
Advertising and Sales Spend,” as it only provides global figures for the years prior to
Applicant’s first use date. Nevertheless, the figures provided are quite large, and other
evidence of record reveals that since before Applicant’s first use of POTIFY, the United States
has been one of Opposer’s largest markets. 37 TTABVUE 413; 38 TTABVUE 8.
11census.gov/popclock/. The Board may take judicial notice of census data. Blackhorse v. Pro-
Football, Inc., 111 USPQ2d 1080, 1098 n.114 (TTAB 2014), aff’d, 112 F.Supp. 3d 439, 115
23
Opposition Nos. 91243297 and 91248487
as it did in 2015. To say the very least, this evidence is significant, persuasive and
corroborative of the advertising and publicity evidence. Not only have many
Americans been exposed to the SPOTIFY mark, but a large percentage of Americans
“Perhaps the most significant of the four elements set forth in the Act to determine
fame is the extent of actual public recognition of the mark as a source-indicator for
the goods or services in connection with which it is used.” TiVo Brands LLC v. Tivoli,
LLC, 129 USPQ2d 1097, 1104 (TTAB 2018) (quoting Nike Inc. v. Maher, 100 USPQ2d
1018, 1024 (TTAB 2011)). It would be difficult to overstate the extent of public
Opposer’s 23.3 million Facebook “likes” (and its millions of followers on other
Dec. ¶ 23); 31 TTABVUE 12, 24, 47. Opposer’s search of the iWeb Corpus, an online
database of 14 billion words, revealed that SPOTIFY had more Web “hits” than a
EXPRESS, CHANEL and BARBIE. 29 TTABVUE 2, 5, 11, 50-61 (Otto Dec. ¶¶ 2-3, 9
and Exs. A and C). Opposer’s “President of Playlists” marketing effort was so widely
USPQ2d 1524 (E.D. Va. 2015), vacated on other grounds and remanded, Pro Football, Inc. v.
Blackhorse, 709 F. App’x 183 (per curiam) (4th Cir. 2018) (mem.).
24
Opposition Nos. 91243297 and 91248487
recognized that it was “the number one trending moment on Twitter, and claimed the
number one spot on Reddit.” 36 TTABVUE 11 (Sauvaget Dec. ¶ 34). And Opposer’s
SPOTIFY brand is so strong that it has been ranked among the “best” or most
“relevant” in the United States and beyond. 36 TTABVUE 15, 367-449 (Sauvaget Dec.
Disc. Tr. 71); 46 TTABVUE 25. This evidence is corroborated by media reports which
refer to SPOTIFY as “well known” and a “household name.” 29 TTABVUE 121, 125,
The evidence leaves no doubt that SPOTIFY is among the most widely recognized
Opposer’s SPOTIFY mark has been registered on the Principal Register in its
broadest (standard character) form for almost 13 years. The incontestable ’218
5. SPOTIFY is Famous
25
Opposition Nos. 91243297 and 91248487
Applicant is using its POTIFY mark in commerce and seeks to register it in the
United States. Because Opposer bases one of its grounds for opposition on its
allegation that POTIFY dilutes Opposer’s SPOTIFY mark, this element is also
satisfied. See Chanel, Inc. v. Majarczyk, 110 USPQ2d 2013, 2023 (TTAB 2014).
Indeed, while the record shows that SPOTIFY is more famous now than it was
years ago, there is no question that the mark was famous in the United States well
prior to January 1, 2017. In fact, based on the large number of pre-2017 Spotify
MAUs13 alone, we can infer that SPOTIFY became famous well before 2017. 37
TTABVUE 4, 120-158 (Sauvaget Dec. ¶ 9 and Ex. 5). The record shows that on
January 1, 2015 the number of SPOTIFY MAUs was extraordinary (when compared
12Applicant specifically contends, without support, that SPOTIFY did not become famous
until “the viral moment that took place on January 9, 2017, when Opposer created a job
posting titled the ‘President of Playlists’ with credentials that could only be met by former
President Obama.” 52 TTABVUE 27.
13 Monthly active users.
26
Opposition Nos. 91243297 and 91248487
cases). 37 TTABVUE 122. Opposer provided daily MAU figures for more than five
years following January 1, 2015, showing that the number of SPOTIFY MAUs grew
consistently from there, and came close to doubling before January 1, 2017. Id. at
TTABVUE 14 and 39 TTABVUE 194, 278 (Sauvaget Dec. ¶ 45 and Exs. 75, 76). In
consumer awareness found to justify findings of fame in other Board cases. Articles
“well known.” Id. at 121, 125, 128, 132, 135, 139, 145. The United States has been
one of Opposer’s most significant markets since before Applicant’s date of first use.
37 TTABVUE 14, 411, 413 (Sauvaget Dec. ¶ 45 and Exs. 74-77); 38 TTABVUE 8; 39
TTABVUE 192. The SPOTIFY mark was famous well before January 1, 2017, and
Dilution by blurring is “an association arising from the similarity between a mark
or trade name and a famous mark that impairs the distinctiveness of the famous
14As Opposer points out, in the weeks leading up to the January 9, 2017 “President of
Playlists” job posting, the number of SPOTIFY MAUs was essentially the same as, and on
some days more than, the number of SPOTIFY MAUs in the weeks following January 9, 2017.
37 TTABVUE 135-36.
27
Opposition Nos. 91243297 and 91248487
mark on its goods, are immediately reminded of the famous mark and associate the
junior party’s mark with the owner of the famous mark, even if they do not believe
that the goods emanate from the famous mark’s owner.” N.Y. Yankees P’ship, 114
USPQ2d at 1509.
The concern is that “the gradual whittling away of distinctiveness will cause the
trademark holder to suffer ‘death by a thousand cuts.’” Nat’l Pork Board v. Supreme
Lobster and Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010) (citation omitted). See
also, Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66
USPQ2d 1811, 1816 (Fed. Cir.) (“dilution law is intended to protect a mark’s owner
from dilution of the mark’s value and uniqueness”). Blurring may occur “regardless
economic injury.” Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118
blurring, we consider:
28
Opposition Nos. 91243297 and 91248487
15 U.S.C. § 1125(c)(2)(B)(i-vi).
Yankees P’ship, 114 USPQ2d at 1506 (citing Research in Motion Ltd. v. Defining
Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1198 (TTAB 2012)). We must then
consumers to conjure up” Opposer’s mark. Nike, 100 USPQ2d at 1030 (quoting Nat’l
Here, the marks are strikingly similar in “appearance, sound, connotation and
commercial impression.” Cf. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)).
In fact, they share the letters P-O-T-I-F-Y, with that being the entirety of Applicant’s
standard character mark and the literal element of its other mark. 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
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Because Applicant’s marks consist of the final six letters of Opposer’s seven-letter
mark, the marks look highly similar. Research in Motion, 102 USPQ2d at 1198 (TTAB
2012) (“we find that there is a high degree of similarity between applicant’s mark
quite similar, and rhyme. See also Russell Chem. Co. v. Wyandotte Chem. Corp., 337
F.2d 660, 143 USPQ 252 (CCPA 1964) (SENTOL similar in sound to SEN-TROL);
Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740-41 (TTAB 2014) (IKEA
While the version of Applicant’s mark in the word and design ’185 Application
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal
portion of a word and design mark likely will be the dominant portion”); In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the
marks comprises both a word and a design, then the word is normally accorded
services” and “because applicant’s mark shares with registrant’s mark that element
responsible for creating its overall commercial impression, the marks are confusingly
similar”).15
Opposer has established that it uses a logo that, like Applicant’s, is green and circular. 36
15
30
Opposition Nos. 91243297 and 91248487
There is no evidence that either SPOTIFY or POTIFY have any meaning; they
both appear to be coined, fanciful terms. Even if we presume that Opposer’s mark
will be perceived as a reference to the word “spot,” and that Applicant’s will be
perceived as a reference to the word “pot,” because the marks are so similar in
appearance and sound, the marks will engender similar commercial impressions. Cf.,
Inter Ikea Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1741 (TTAB 2014) (finding
IKEA and AKEA similar, stating “[w]here, as here, both marks are coined terms that
look alike and sound alike and there are no known differences in the meaning to
cases); Atlas Supply Co. v. The Dayton Rubber Co., 125 USPQ 529, 530 (TTAB 1960)
(“The marks ‘PLYCRON’ and ‘NYCRON’ are similar in composition, they bear a
marked resemblance in sound, and they are both coined terms having no apparent
tires might reasonably attribute a common origin to ‘PLYCRON’ tires and ‘NYCRON’
cord for making tires ….”). While Applicant points out, and we accept, that “pot” is a
nickname for and thus suggestive or descriptive of marijuana, that is not the term
Applicant seeks to register. The term in question is POTIFY, which is much closer in
“pot.”
applications identify computer software which allows users to search for and obtain
information (digital music and other digital content in Opposer’s case and details
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Opposition Nos. 91243297 and 91248487
Applicant’s mark “comes from ‘Pot’, a common pseudonym for marijuana, with the
fancy suffix ‘-IFY,’ and means that marijuana can be found.” 44 TTABVUE 6 (Suslov
Dec. ¶ 27); see also 43 TTABVUE 9 (Suleimanov Dec. ¶¶ 51-56). Opposer’s software
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. In short, we find that the marks are highly similar in their entireties,
and that Applicant’s mark will “trigger consumers to conjure up” Opposer’s famous
mark. This weighs in favor of finding dilution by blurring. This is true even for the
Class 25 goods covered by the ’717 Application because consumers familiar with
Applicant’s mark will understand that it is used with software products, which
disclaimer or resort to Section 2(f) of the Act, and is among the most highly recognized
marks in the United States. Indeed, a substantial portion of the United States
population regularly uses SPOTIFY products and services. Applicant does not dispute
that SPOTIFY is highly distinctive; instead, it deflects the question and changes the
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Opposition Nos. 91243297 and 91248487
In any event, “[e]ven if the mark is not viewed as inherently distinctive, we found
above that the mark is famous, which necessarily subsumes a finding that the mark
has high acquired distinctiveness.” N.Y. Yankees P’ship, 114 USPQ2d at 1507. See
also, Chanel, Inc., 110 USPQ2d at 2025 (“In any event, the discussion above regarding
opposer’s extensive evidence of fame of the CHANEL mark used in connection with
clothing, fashion accessories, beauty products and boutiques more than sufficiently
dilution by blurring.16
exclusive. Applicant does not even address this factor in its Trial Brief, again
deflecting the question and choosing to change the subject instead. 52 TTABVUE 41-
42.
Opposer enforces its rights in the SPOTIFY mark vigorously, including through
(Sauvaget Dec. ¶ 49); 30 TTABVUE 23-78; 33 TTABVUE. This type of evidence has
been found to establish “substantially exclusive use.” Chanel, 110 USPQ2d at 2025-
26; UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1899 (TTAB 2011); Nike,
As explained in Section IV(A)(3), and elsewhere in this decision, few marks are as
widely recognized in the United States as SPOTIFY. This factor weighs heavily in
Applicant represents that its decision to adopt the POTIFY mark had nothing to
do with Opposer or the SPOTIFY mark. 43 TTABVUE 9-10 (Suleimanov Dec. ¶¶ 51-
56, 60-61); 44 TTABVUE 4, 6 (Suslov Dec. ¶¶ 23, 25, 27). This is hard to believe.
Like many Americans, Mr. Suleimanov and Mr. Suslov were both longtime
SPOTIFY users prior to Applicant’s adoption of POTIFY. In fact, Mr. Suleimanov was
a heavy SPOTIFY user well before Applicant chose its POTIFY mark. 47 TTABVUE
2-322 (Ohle Reb. Dec. ¶¶ 3-6 and Exs. A-E). 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
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Opposition Nos. 91243297 and 91248487
SPOTIFY. The leap in logic and common sense Applicant asks us to take here is even
more incredible when we consider that the POTIFY software and services perform
many of the same functions as the SPOTIFY software and services, albeit in
Applicant’s claim of innocent adoption calls to mind Nat’l Pork Bd., 96 USPQ2d at
1479. There, the applicant adopted THE OTHER RED MEAT, even though the
evidence showed that applicant’s CEO was not only aware of the opposers’ slogan
THE OTHER WHITE MEAT, but also had “customer relationships with well-
THE OTHER WHITE MEAT campaign.” Nat’l Pork Bd., 96 TTABVUE at 1498. Thus,
the CEO’s “assertion that he came up with the slogan THE OTHER RED MEAT ‘out
of the blue’ and without any thought of opposers’ well-known slogan stretches
credulity.” Id. Ultimately, while we were “reluctant to conclude bad faith on the part
permissible for applicant to create such an association, and hence, consistent with a
In any event, even if we were to buy Applicant’s claim of innocent adoption having
nothing to do with SPOTIFY, that would not change the ultimate result, given our
329,000,000 results. According to Opposer, all of the results were for SPOTIFY, while
none were for POTIFY, the searched term. 29 TTABVUE 7, 115-16 (Otto Dec. ¶ 13
35
Opposition Nos. 91243297 and 91248487
and Ex. G). Applicant does not dispute this claim. Thus, while there is no direct
evidence that anyone has associated POTIFY with SPOTIFY as a result of conducting
a Google search of POTIFY, it appears that Opposer is suggesting that we infer that
such an association has occurred or will occur in the future. We do not discount the
TTABVUE 54 (Suleimanov Disc. Tr. 44), but we cannot find on this record that such
In any event, 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” Opposer’s famous mark, and “associate the two.” N.Y.
Yankees, 114 USPQ2d at 1507. As we held in the Maher case with respect to JUST
17 We have found that where an application challenged on the ground of dilution is based on
an intent to use, and the applicant “has not engaged in any actual use of the junior mark, it
is impossible to present any evidence of actual association between the marks in the
marketplace,” but that does not preclude a finding of dilution when the balance of dilution
factors weighs in favor of such a finding. Nat’l Pork Bd., 96 USPQ2d at 1498. Indeed, we have
found dilution in several cases despite there being no evidence of actual association, when
the balance of the dilution by blurring factors in 15 U.S.C. § 1125(c)(2)(B)(i-vi) weighed in
favor of finding dilution. See e.g., TiVo Brands, 129 USPQ2d at 1117-18 (“the fact that there
is no evidence of actual association between the marks and none was intended by Applicant
do not outweigh the other dilution factors”); N.Y. Yankees P’ship, 114 USPQ2d at 1509-10,
1512; Nike, 100 USPQ2d at 1030-32.
18At the same time, we recognize that direct evidence of an actual association may be difficult
to come by, and that any consumers reviewing the results of a Google search for POTIFY
could make an actual association.
36
Opposition Nos. 91243297 and 91248487
goods and services are widely used and recognized by a large percentage of the United
States population, or that Opposer’s SPOTIFY mark is highly distinctive. This was
the case prior to Applicant’s claimed date of first use of its mark. Moreover, there is
no evidence that any United States marks come as close to SPOTIFY as Applicant’s
Dec. ¶ 51), and, although we need only find likely dilution, we find it inevitable that
claim.19 Registration of Applicant’s mark in both the ’717 and ’185 Applications is
refused.
19We need not reach Opposer’s likelihood of confusion or dilution by tarnishment claims.
Yazhong Inv. Ltd. v. Multi-Media Tech Ventures, Ltd., 126 USPQ2d 1526, 1540 (TTAB 2018);
Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).
37