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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One crucial thing before filing a trademark in order not to waste your money and time

When you have your own business sooner or later you will start thinking about your branding and how to protect it from unfair use by competitors.

All of this is normal because when one business takes off, gaining some traction and achieving some success, other market participants will try to take advantage of its reputation and recognizability amongst the consumers. 

From that perspective, every business owner should be prepared with a proper trademark protection strategy.

Building a good brand name is not an easy task. From one side, such a name should follow so many marketing requirements, from the other the name should be unique, that is to say, it must not be registered as a trademark by someone else.

This, in particular, is essential. If your brand is already registered with the Patent Office of the country where you are operating as a business, this means that you can become a trademark infringer even without suspecting this.

It can be a trap because in such cases a lawsuit can be really expensive and in the end, you probably will need to change your beloved brand.

What is the solution in such situations? Well, it is a simple one, just check the official trademark database of your state Patent Office. This will show you whether there are earlier marks or not.

What do you need to know when you conduct such searches?

In brief, the things that can be bear in mind are:

1. Every trademark is valid only for the goods and services for which it is registered. This means that when you compare two marks they have to share common G&S. If this is the case it could create a problem. All goods and services are grouped in classes called Nice Classes. You can classify your G&S using this free tool TMCLASS.
2. Trademark protection scope covers not only other identical signs but similar too. For example, a trademark INEX for bicycles can stop a later mark INIX for bicycles.
3. Assessment of identical marks is relatively easy. Both marks should be absolutely identical in every aspect. They have to be for identical G&S too.
4. Assessment of similar marks, however, could be tricky. This requires in-depth legal knowledge and understanding of the case law in the relevant country.

It is advisable, such searches to be done through the brand-building process because this will allow you to make modifications to the brand before launching and filing a trademark application. It can save you a lot of money and time. 

In case you want to learn how to do trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand you can check this Udemy Complete course on trademark search.

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:

MILLENNIALFALCON crashed after a US trademark dispute

Lucasfilm Entertainment Company won a trademark opposition in the US against an application for “MILLENNIALFALCON” in class 41: “entertainment services in nature of live musical performance by musical bands, production services of sound and music recordings”.

This trademark was applied for by Ilan Moskowitz who used it for his musical performances including parody against corporate culture and in particular one related to Disney.

Lucasfilm invoked an earlier trademark for MILLENNIUM FALCON in class 28: “Toy vehicles”. In addition they claimed that their mark had been used for many other activities and products such as entertainment services, theater productions, television programs, motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-care products, linens, towels, apparel, food, online games, computer games, video games, music, and mobile applications.

They provided the USPTO with the necessary evidence for sales, licensing agreements, advertisements etc.

As it is well-know MILLENNIUM FALCON is the name of a space ship from the Star Wars series, which have become tremendously popular for the last almost 40 years.

Ilan Moskowitz claimed that both signs were not similar. Firstly because of the three letters IAL in the first word which were different and create different meaning. Secondly because the goods and services were completely different.

The USPTO disagreed. Although the earlier mark is registered only for toys, it has been used for many different products and services for a long period of time (in the US trademark protection arises based on real market use). Additionally the phrase MILLENNIUM FALCON is very well known by all consumers.

The three different letters couldn’t overcome the similarities between both signs including from conceptual point of view.

Bearing in mind all of that, the USPTO considered that there is a possibility of consumer confusion between both trademarks. It was decided that the parody defense claim is not allowed because the marks did not have any difference in the eyes of the possible consumer and did not carry the necessary conditions for the parody claim to be valid.

Source: Ankara Patent Bureau – Cansu ÇATMA BİLEN and Önder Erol Ünsal for Lexology.

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 

Breaking news – The US Supreme Court has ruled in favor of Booking.com

The US Supreme Court has ruled in one of the most interesting cases recently regarding registration of generic names as trademarks.

The case at hand concerns the attempt of Booking.com to register the same domain name as a word trademark. The USPTO refused this application based on absolute grounds – the term booking is descriptive (more detail can be found here)

As an argument for its decision the USPTO relied on another Supreme Court’s decision in the case Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., where the Court considered that the use of Company after low distinctive sign cannot create distinctiveness by itself in order the sign to be registered as a trademark.

In the present case, however, the Supreme Court disagreed. While the additional element Company is not enough to create distinctiveness because it is not so specific, the .com element speaks for a particular domain name address, which is unique.

This means that even generic names + .com or another domain address can serve as trademarks in case consumers perceive them as such. The reason is that when consumers distinguish the generic name with the particular web address, this name starts to serve as a trade indicator for the relevant products or services because it leads to a particular website.

This doesn’t mean that after receiving protection all other competitors will not be able to use BOOKING as a term. Quite the contrary, they will do this with exception of the specific web address booking.com taken in it entirety.

Source: IPKat.