Spotify vs Opstify

A Swedish audio streaming and media service provider founded in 2006 by Daniel Ek, Spotify opposed a mark proposed for registration by Opstify Corporation vide the opposition notice dated 13th July, 2021. The former is the world’s largest music streaming service provider with over 356 million monthly active users. According to Trademark Trial and Appeal Board filing, Pennsylvania-based Opstify filed an application to register a namesake mark in September, 2020 for business management consulting. The opposer i.e., Spotify claims that the registration of this mark has the likelihood of confusing the customers.

SpotifyThe opposer launched its website in 2008 which enables the company to offer software for streaming and managing music, podcasts and videos. Further, the users can also download the music, podcasts or videos to listen offline on their phones, tablets, laptops or computers. Moreover, Spotify is a well-known mark in the United States as well as across the globe and hence, it has gained valuable goodwill, which is now at stake. The opposer has also credited its popularity to the mobile application that allows immediate access anywhere and anytime. It has reduced the efforts the consumers had to take. The same utilities as provided on the website are also provided on the application.

The opposer i.e., Spotify also states that it has been registered by federal trademark under International Classes 09, 25, 35, 38 and 41. Therefore the company deals with the following goods and services:

International Class 9: Computer software for use in the delivery, distribution and transmission of digital music and entertainment-related audio, text and multimedia content; computer software for enabling transmission, storage, sharing, collection, editing, organizing and modifying audio, messages, images and other data for use in social networking, online chats, creating social networking databases and for use in social networking database management; computer software for creating searchable databases of information and data for peer-to-peer social networking databases.

International Class 38: Sound and television broadcasting of music and films via the Internet, telephony, or satellite broadcasting; providing on-line chat rooms and discussion forums for transmission of messages and digital pictures among users in the field of general interest; telecommunications on the Internet, namely, audio and video transmission.

International Class 41: Entertainment, namely, providing music, film to users online via a communication network; providing an online database via a communication network featuring music, films, and entertainment data.

Therefore, Spotify has gained a customer base by its constant promotion and advertising activities since inception and there is a strong association between the customers and the enterprise.

Further, the applicant i.e., Opstify has claimed actual use in its application which was published in the Official Gazette on March 16, 2021, with the service of business management consulting provided under Class 35.

To summarize, the opposer i.e., Spotify has opposed the applicant i.e., Opstify, on the basis of likelihood of confusion. The former also stated that the registration of the latter mark shall take away its distinctiveness. Therefore, it has prayed that the application should be rejected and that no registration should be issued to the applicant to protect its differentiating mark.

Concluding Remarks

Trademarks protect the identity of an enterprises by ensuring that their namesake marks and devices shall remain distinctive in the market. The companies invest their resources, efforts, money and time in gaining reputation and goodwill in such a competitive market. Therefore, other competitors or newbies should take into account the existing trademarks and should not try to hamper one’s goodwill or use it for their own commercial gains or purposes. The data and resources about the existing trademarks are available online on various platforms and a prior research can be helpful in saving the time and litigation costs. In the said case, the opposer i.e., Spotify is a well-known mark in the globe. It is not possible that the applicant i.e., Opstify has not heard of the brand. There can be two perspectives to this situation. The first being that the applicant has the malafide intention of increasing its gains with the help of the pre-existing goodwill of the opposer. On the other hand, the competent authority can also reject the opposition stating that the applicant specifically deals with “business management consulting” under Class 35 and even if Spotify is registered under Class 35, it cannot gain the monopoly of all the goods in the said class. Spotify is, no doubt, a distinctive mark and it is difficult for a prudent man to connect a media brand with business consultancy. Therefore, it depends upon the board whether it shall reject or accept the registration application of Opstify. The counter-statement shall also define the path of the decision by the board. Hence, the future holds the status of applicant’s mark.

Author: Tanya Saraswat – a student of  Narsee Monjee Institute of Management Studies (NMIMS), in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

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