Spotify won a trademark dispute against a cannabis app provider

Spotify won a trademark dispute in the US that has a slight tinge of marijuana.

The case concerns a trademark application for POTIFY by a small US company offering an app that connects users with firms that dispense and deliver cannabis.

Spotify, one of the largest music streaming companies in the world, filed an opposition based on earlier trademark SPOTIFY. According to the company, both signs were confusingly similar and what’s more, the mark applied for led to a trademark dilution by way of tarnishment and blurring.

The USPTO agreed with Spotify finding both marks confusingly similar due to clear visual and phonetic similarities. One letter difference was not enough to overcome this issue. According to the Office, dilution is possible too because of the clear association between the signs in the consumer’s mind.

The applicant’s arguments that their mark was created without relation to the famous brand, and that it focuses only on the term POT that is associated with the use of marijuana were dismissed.

The Office stated that taking into account the reputation of the earlier mark, it is highly unlikely that the owners of the cannabis app weren’t aware of the Spotify app service at all.

This dispute shows how risky such brand building can be. Although business areas can be different, a problem can arise again due to the established reputation of famous trademarks in the market.

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New fees for registration of trademarks in the USA

The United States Patent Office will collect new increased fees regarding registration of trademarks. Some of these new fees are as follow:

  • For online trademark application an increase of the fee from $275 to $350 per class;
  • For Declaration of Continued Use an increase of the fee from $125 to $225 per class;
  • Extension of the time for filing oppositions, an increase from $100 to $200 for the initial 90-day request and from $200 to $400 for a final 60-day request;
  • Filing a Notice of Opposition or Petition to Cancel, an increase from $400 to $600 per class;

More on Lexology;

In addition, WIPO announced new fees for international trademarks with designation of the USA. The new fees will take affect on 18.02.2021 and are as follow:

To what extent can UpWork use the word Freelancer?

The popular platform for freelance services UpWork won a trademark dispute against its rival Freelancer in the US.

The case at hand concerns the way how UpWork use the word Freelancer for its apps.

According to Freelancer, Upwork uses this word as an indication of its app in Apple and Google stores, which is a problem for the company that owns trademarks for FREELANCER in classes 9, 35, 36, 45.

The Court in California, however, dismissed this claim. In the case of low distinctive and descriptive trademarks with limited protection, other market participants can use the descriptive word insofar this use is not a trademark one and serves only for description purposes related to the relevant goods and services.

In the case of UpWork, they did exactly this, using the word Freelancer as a descriptive term. There was no possibilities for consumer confusion because the UpWork logo was completely different based on which consumers can distinguish both apps clearly.

Lehman Brothers trademark is still alive and kicking

One interesting trademark dispute from the United States shows how one trademark protection can be still viable even though it’s owner is not operational.

The case at hand concerns the well-known former investment bank Lehman Brothers and its trademarks. After the bank’s bankrupt in 2008 its Lehman Brothers trademarks were transferred to Barclays Capital which licensed them back to the bank for the purpose of the liquidation procedures.

In 2013, Tiger Lily Ventures Ltd applied for a trademark Lehman Brothers for beer, spirits, and bar and restaurant services.

Meanwhile all Lehman Brothers trademark owned by Barclays expired and they applied for a new trademark Lehman Brothers later in 2013. In the use, trademark rights rise based on real market use of a sign.

Barclays filed an opposition against the Tiger Lily Ventures’ application claiming:

  • a prior trademark use for Lehman Brothers and the fact that the later mark application can cause consumer confusion;
  • that LEHMAN BROTHERS mark was famous and Tiger Lily’s use diluted its distinctive quality;
  • that Tiger Lily’s LEHMAN BROTHERS mark falsely suggested an association with Barclays
  • that Tiger Lily did not have a bona fide intent to use the LEHMAN BROTHERS trademark.

Tiger Lily Ventures counter opposed the Barclays’ later Lehman Brothers mark claiming that all previous marks were abandoned.

The Trademark Trial and Appeal Board concluded that Barclays’ Lehman Brothers marks weren’t abandoned. The reason was that they were licensed back and used for the liquidation of the bank which encompasses different financial procedures and assets deals.

After that, the Board considered both marks as identical. For the goods and services similarity assessment, the Board concluded that even though Barclays’ Lehman Brothers marks had been used for financial services, their is a risk of consumer confusion. The argument for this is that many big companies use their brand for different goods and services apart from their main activities. For example for foods, drinks and for different advertising and merchandising products.

In that regard, it is possible the Tiger Lily Ventures’ consumers to think that there is a link with the famous Lehman Brothers bank taking into account its still existing reputation in the market.

Source: Ira S. Sacks and Rachel B. Rudensky – Akerman LLP 

A pizza war between US and UK based companies rose the issue of the international IP strategy

One interesting dispute between pizza restaurants from the US and the UK brings to us the importance of intellectual property strategy for business development on international level.

Imapizza LLC  is a US based company owner of &pizza restaurants which main differentiating character is the oval form of their pizzas. The company has plans to start business in the UK but without taking further steps.

Meanwhile, the UK based company @pizza opened restaurants in Glasgow and Birmingham offering oval pizzas too.

Imapizza LLC initiated a lawsuit in the US alleging copyright infringement, trademark infringement and trespass.

According to the company, employees of @pizza visited their restaurants taking photographs in order to copy their business model and intellectual property. What’s more @pizza downloaded and used photos from the Imapizza’s website.

The court dismissed all claims as groundless. In the appeal the Court of Appeals for the D.C. Circuit upheld this decision.

According to the court there was no copyright infringement. Uploading and downloading of content by itself cannot constitute copyright breach under the US law. Probably the use of these photos could be an infringement but this happened in the UK and local court can decided on this issue.

Regarding the photos that were been taken in the Imapizza’s restaurants, they cannot infringe copyrights of the company because its restaurants are public places and copyright protection doesn’t cover such cases.

When it comes to both trademarks, although they are similar their was no infringement too. The US trademark law can be invoked in case of unauthorized trademark use in another country only if this can effect upon US commerce.

The Court dismissed the Imapizza’s arguments that this effect is connected with the US students and tourists in the UK which can be mislead by the UK trademark.

With regard to the trespass allegation, the Court found it groundless too because all photos took by the employees of the UK company happened on public places. Every costumer is allowed to take photos when going to a restaurant. If this activities happened in restricted premises probably the conclusion would be different but in the case at hand there was no illegal acts.

This dispute shows clearly how important an intellectual property strategy could be for every company. Some steps have to be implemented in that regard in order the business development of every company to be safeguard in the future on all markets of interest.

Can Booking.com be a trademark – that’s the question

Megan Taylor (Novagraaf) published an interesting article for Lexology where she discusses the topic for registration possibilities of low distinctive or generic names as trademarks.

The case at hand concerns the Booking.com’s attempt to register this domain name as a word trademark in the US. So far all applications for such trademarks have been refused by the USPTO. The arguments for this were the fact the booking is descriptive word for accommodation services for which the registration was sought.

The company’s position, however, was that the presence of .com makes the difference because it helps consumer to associate the word with the company’s business and in that way to create secondary meaning for the word.

The USPTO considers that such words have to be left for free use by all market participants.

Currently this case is submitted to the US Supreme Court and everyone expect its position.

In contrast, Booking.com was more successful in the EU. They received registration for its word mark in 2007 after proving acquired distinctiveness among the consumers.

Having said that, however, the EUIPO has changed its practice on the matter and nowadays it is really difficult such generic words to be registered as word marks even in case of evidence for a secondary meaning.

WIPO announced its new Director General

wipo-internship-2017WIPO reports about the election of Mr. Daren Tang as the new Director General of the organisation. He will succeed Mr. Francis Gurry, who has served as WIPO’s Director General since October 1, 2008.

As it is well-known, there was a tension between the US and China about the candidates for this position. The US was completely against the China’s nomination including in the light of the trade conflict between both countries.

Mr. Daren Tang, as a former Chief Executive of the Intellectual Property Office of Singapore, was accepted as a good choice in that regard.

For more information here.