Small Jazz Musician Foils Apple Music Trademark Registration

by Dennis Crouch

Bertini v. Apple Inc., — F.4th — (Fed. Cir. 2023)

Apple Data was based by The Beatles in 1968 and shortly grew to become successful, producing many hit data within the late Sixties and early Seventies. Apple Pc Firm was based within the mid-Seventies and virtually instantly sued for trademark infringement by Apple Corps (the dad or mum firm of Apple Data).  The businesses ultimately settled the case with Apple Pc paying $80k and agreeing to remain out of the music enterprise.  The businesses clashed once more within the 2000s as Apple Pc (now Apple Inc.) expanded into music through iTunes and different providers.  The 2 ultimately reached one other settlement that transfers substantial rights over to Apple Inc. to make use of the mark in reference to its music-related services and products.

In 2015 Apple started utilizing the mark APPLE MUSIC as its new music streaming service. It additionally filed to register a trademark on the mark.

In the meantime, Charlie Bertini created his band AppleJazz Band again in 1984 to carry out on the AppleJazz competition.  He additionally created the AppleJazz report label.  Bertini filed an opposition to Apple’s TM registration which the TTAB ultimately dismissed.  On attraction right here, nonetheless, the Federal Circuit has reversed — holding that Apple had not confirmed a enough proper of precedence.

Tacking: The fundamental difficulty within the case is whether or not Apple Inc. can declare precedence use again to the founding of Apple Data in 1968 (or someday earlier than 1984). Of significance, the pre-84 use of Apple mark was solely for “gramophone data” and different report codecs.  In its registration utility, Apple is looking for to register APPLE MUSIC for “15 broad classes of providers, from the manufacturing and distribution of sound recordings, to presenting dwell musical performances, to offering web sites that includes leisure and sports activities data.”  Slip Op.

On attraction, the Federal Circuit held that the tacking evaluation should be pursued for every service listed its utility.

The Board legally erred by allowing Apple to say absolute precedence for the entire providers listed in its utility based mostly on a displaying of precedence for one service listed within the utility. Tacking a mark for one good or service doesn’t grant precedence for each different good or service within the trademark utility. A trademark proprietor should present tacking is offered for every good or service for which it claims precedence on that floor. . . . The trademark applicant can not set up absolute precedence for the complete utility just by proving precedence of use for a single service listed within the utility.

Slip Op.  Right here, Apple has not proven that taking is correct for dwell musical performances and due to this fact the appliance should be rejected.  On remand, Apple will seemingly be capable of slim its utility to solely providers which can be correctly lined by its task from Apple Data.

In her evaluation, Federal Circuit Chief Decide Moore repeatedly said that tacking is an exception to the atypical rule and must be narrowly construed.  American courts “uniformly apply the tacking doctrine narrowly.”  Though tacking permits for minor modifications in providers and within the mark itself, tacking requires “substantial identification.” “[G]oods or providers should be considerably similar for tacking to use.” Id.  Within the context right here, with a purpose to have tacking for musical performances “Apple should due to this fact present dwell musical performances are considerably similar to gramophone data.” Though substantial identification is a query of truth, the Federal Circuit concluded that there was no want for the TTAB to find out this query — “no cheap individual might conclude … that gramophone data and dwell musical performances are considerably similar.”

Accordingly, Apple is just not entitled to tack its use of APPLE MUSIC for dwell musical performances onto Apple Corps’ 1968 use of APPLE for gramophone data. As a result of Apple started utilizing the mark APPLE MUSIC in 2015, Bertini has precedence of use for APPLE JAZZ as to dwell musical performances. We due to this fact reverse the Board’s dismissal of Bertini’s opposition to Apple’s utility to register APPLE MUSIC.

Id.

Observe that Apple has considerably moved-on from this difficulty and redid its brand as proven beneath utilizing a design-plus-word mark.