Victoria, BC

Join us on Vancouver Island in majestic Victoria, BC for 3 days of cannabis cultivation and extraction.

June 20-22, 2022

Niagara Falls, ON

Join us in spectacluar Niagara Falls, ON for 3 days of cannabis cultivation and extraction.

September 12-14, 2022

Grow Up Awards Gala

Annual Grow Up Industry Awards. Come celebrate the innovation and sucess in the cannabis growing industry.

June 20, 2022, Victoria, BC

That hits the pot. Spotify stubs out bid to trademark ‘Potify’

Jan 12, 2022 | Media Partners, The GrowthOp

This post is presented by our media partner The Growth Op
View the original article here.

Judge rules in favour of Spotify over delivery app, reasoning that the two names are “strikingly similar.”

Article content

The behemoth that is media streaming service Spotify has squashed far smaller Potify in its bid to trademark its marijuana-themed moniker, with the Trademark Trial and Appeal Board ruling the names are “strikingly similar.”

Advertisement

Story continues below

Article content

In its decision released this week, David was felled by Goliath when the board ruled in favour of Spotify blocking the attempt to register “Potify” as a trademark for an app that connects weed users with cannabis dispensaries.

Spotify has about 381 million users, including 172m subscribers, in 184 markets. U.S. Software Inc., the company trying to register the trademark, provides both a website and a smartphone app. It allows users to search for cannabis and connect with a local dispensary for delivery, per WFAV951.

  1. Trademark applications often claim a range of products and services from dried flower to oil, edibles, topicals and retail services

    Determining how best to protect intellectual property essential for players in Canadian, U.S. cannabis space

  2. Drake has announced a partnership with Canopy Growth for the release of his upcoming cannabis brand More Life Growth Co.

    Drake’s bid to trademark Canadian cannabis warning labels proves a bust

  3. Alicia Keys and Dua Lipa speak onstage during the 62nd Annual GRAMMY Awards at Staples Center on Jan. 26, 2020 in Los Angeles, California.

    PR firm could do with a bit of PR after insinuating Alicia Keys’ Grammy comments were pot promo

Advertisement

Story continues below

Article content

The ruling notes that Spotify argued, among other things, that trademarking Potify would dilute its famous mark “by both blurring and tarnishment.”

To convince the board, Spotify had to show it was the owner of a famous mark, its mark is distinctive, another trademark would dilute its mark and it had the mark first.

Just as a point of interest, Googling Potify will note: “Showing results for spotify. Search instead for potify.”

Although board members did not find that an association between the two companies has occurred or will occur, it did not discount that as a possibility.

“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’ the opposer’s famous mark, and ‘associate the two,’” the decision reads.

Advertisement

Story continues below

Article content

“It defies logic and common sense that a long-time, frequent Spotify user, and another long-time Spotify user, jointly came up with the highly similar name Potify without intending to,” the ruling notes.

Potify can still use its name in future, but trademarking the handle is, as it stands, a no-go.

It’s certainly not the first time cannabis brands have fallen hard after skating a thin line. For example, retailer Toys “R” Us (Canada) Ltd. gain a partial victory as part of its trademark infringement suit against Vancouver cannabis shop, Herbs “R” Us Wellness Society.

The Federal Court dismissed some claims, but did conclude the retailer had proved the dispensary’s name and logo design were likely to have a negative effect on the reputation and goodwill attached to former business.

Advertisement

Story continues below

Article content

Health Canada’s directive was more definitive, with the regulator ruling that the recently launched Trailer Park Buds had to revise its name because of the association with the television show, Trailer Park Boys.

In 2020, the Canadian entertainment and animation studio Treehouse won its case against an Oklahoma dispensary over the unauthorized use of its logo. The kids brand owned by Corus Entertainment basically won by default since representatives for Treehouse Dispensary LLC did not show up to court.

Rapper Drake also apparently flamed when he tried to trademark the warning label that appears on Canadian cannabis products. In November of 2019, the Canadian musician and actor received word from United States Patent and Trademark Office that his request had been rejected.

Advertisement

Story continues below

Article content

We apologize, but this video has failed to load.

Subscribe to Weekend Dispensary , a new weekly newsletter from The GrowthOp.

    Advertisement

    Story continues below

    Comments

    Postmedia is committed to maintaining a lively but civil forum for discussion and encourage all readers to share their views on our articles. Comments may take up to an hour for moderation before appearing on the site. We ask you to keep your comments relevant and respectful. We have enabled email notifications—you will now receive an email if you receive a reply to your comment, there is an update to a comment thread you follow or if a user you follow comments. Visit our Community Guidelines for more information and details on how to adjust your email settings.

    This post was originally published by our media partner here.

    UPCOMING EVENTS

    O’Cannabiz – June 1-3, 2022
    International Convention Centre, Toronto ON

    Grow Up – June 20-22, 2022
    Victoria Convention Centre, Victoria ON

    Grow Up – September 12-14, 2022
    Niagara Falls Convention Centre, ON