This is a great story about how one should never be afraid to fight to protect their trademark rights, no matter how large the adversary. Let’s begin with a question. Would you have the nerve to go up against a huge multinational corporation like Apple!? Well, a lone jazz artist did just that. And won… in the long run.
Jazz trumpeter Charles Bertini filed an opposition against Apple, Inc. in the Trademark Trial and Appeal Board (“TTAB” or “Board”) within the United States Patent and Trademark Office (“USPTO”) to prevent Apple from federally registering APPLE MUSIC for several services, including, “production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances.” The basis for his opposition was that he had been using his APPLE JAZZ mark since before any use of APPLE MUSIC by Apple. Bertini was able to show he has used APPLE JAZZ in connection with festivals and concerts since June 13, 1985, and to issue and distribute sound recordings under his record label since the mid-1990s. While the TTAB found Bertini’s common law mark APPLE JAZZ (1) to be inherently distinctive, (2) has a priority date of June 13, 1985, in connection with his “arranging, organizing, conducting, and presenting concerts and live musical performances,” and (3) would likely be confused by consumers with Apple’s use of APPLE MUSIC, it still sided with Apple and dismissed the opposition. This is so even though Apple only began using the APPLE MUSIC mark in June 2015 for its music streaming service, nearly 30 years after Bertini’s priority date.
Apple convinced the TTAB that it was entitled to an earlier priority date of August 1968 based on trademark rights it purchased from Apple Corps, the Beatles’ record company, which covers the mark APPLE for “gramophone records featuring music” and “audio compact discs featuring music,” under a legal principle called “tacking.” Accordingly, the TTAB dismissed the opposition. However, rather than giving up, Bertini appealed his case to the Court of Appeals for the Federal Circuit (“Federal Circuit”).
The Federal Circuit explained in its analysis that trademark rights arise from the use of a mark in commerce. The party who first uses a distinctive mark in connection with particular goods or services has priority over other users. Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, trademark owners may, in limited circumstances, clothe a new trademark with the priority position of an older mark. This doctrine is known as “tacking.” (E.g., AMERICAN SECURITY BANK for banking services and AMERICAN SECURITY for the same services; also, think of how the Cadillac emblem has changed over time.) However, the standard for a trademark owner to invoke tacking is strict. The party seeking to tack bears the burden to show the older mark and the new mark create the same continuing commercial impression so that consumers consider both marks as the same. Tacking can apply in situations where the marks are sufficiently similar such that a consumer would understand the two marks identify the same source.
In its analysis, the Court also answered the question of whether a trademark applicant can establish priority for all goods or services in its application merely because it has priority through tacking in a single good or service listed in the application. Apple sought to register its APPLE MUSIC mark for 15 broad categories of services, from the production and distribution of sound recordings, to presenting live musical performances, to providing websites featuring entertainment and sports information. The company attempted to claim priority for all of these services by tacking onto Apple Corps’ 1968 use of APPLE for gramophone records. The Board found Apple was entitled to tack its use of APPLE MUSIC for production and distribution of sound recordings onto Apple Corps’ 1968 use of APPLE for gramophone records and thus may claim priority for all of the services listed in its application. The Federal Circuit held this was legal error. Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application. A trademark owner must show tacking is available for each good or service for which it claims priority on that ground. In holding otherwise, the Board conflated the tacking standard with the standard for oppositions. An opposer can block a trademark application in full by proving priority of use and likelihood of confusion for any of the services listed in the trademark application. However, the reverse is not true. The trademark applicant cannot establish absolute priority for the full application simply by proving priority of use for a single service listed in the application.
To sustain his opposition, Bertini only needed to show he has priority of use of APPLE JAZZ for any service listed in Apple’s application. Bertini’s use of APPLE JAZZ overlaps with two of the services in Apple’s application: production and distribution of sound recordings; and arranging, organizing, conducting, and presenting live musical performances. The Federal Circuit held that the TTAB improperly focused only on Apple’s ability to tack its use of APPLE MUSIC for production and distribution of sound recordings and did not consider live musical performances. Even if Apple is entitled to tack its use of APPLE MUSIC for production and distribution of sound recordings onto Apple Corps’ 1968 use of APPLE for gramophone records, this does not give Apple priority as of 1968 for live musical performances. Nor does it give Apple a 1968 priority date for the laundry list of other services in its application.
The Federal Circuit went further to consider whether tacking is applicable to uses on different goods or services. The TTAB has in the past held tacking requires the new and old goods or services be “substantially identical.” The Federal Circuit agreed with this standard. Goods and services are substantially identical for purposes of tacking where the new goods or services are within the normal evolution of the previous line of goods or services. This inquiry depends, at least in part, on whether consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services. Accordingly, to establish tacking, Apple had to show that live musical performances are substantially identical to gramophone records. In a relatively unusual move, the Court did not reverse and remand to the TTAB for further proceedings. Instead, the Federal Circuit found that no reasonable person could conclude that gramophone records and live musical performances are substantially identical. Therefore, Apple is not entitled to tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ 1968 use of APPLE for gramophone records. Because Apple began using the mark APPLE MUSIC in 2015, Bertini has priority of use for APPLE JAZZ as to live musical performances. The Court therefore reversed the Board’s dismissal of Bertini’s opposition to Apple’s application to register APPLE MUSIC and held that its application to register APPLE MUSIC must therefore be denied.
And that’s how a lone jazz artist defeated a huge multinational corporation. Know your rights. Fight for your rights. Even when you don’t win every battle. It’s the overall victory that matters.
©2023 Albert F. Davis, Esq.
This law update is intended for general information purposes only. One should not consider the update legal advice or legal opinions relating to any specific facts or circumstances. An attorney-client relationship is not created by reading this update. Please feel free to contact A. F. DAVIS LAW for further information.