Case Briefs
Case(s): Bertini v. Apple Inc., No. 21-2301 (Fed. Cir. 2023)
Apple sought to register the mark APPLE MUSIC for use in connection with “the production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances.” The tech company began using the mark in 2015 when it launched its APPLE MUSIC streaming service. Charles Bertini, a professional jazz musician, lodged an opposition to Apple’s registration with the Trademark Trial and Appeal Board (“TTAB”), arguing that he has used the mark APPLE JAZZ in connection with festivals and concerts since 1985, and in the mid-1990s, began using APPLE JAZZ to issue and distribute sound recordings. Bertini argued that Apple’s registration would likely cause confusion with his common law trademark.
The TTAB dismissed Bertini’s opposition, finding that his common law trademark APPLE JAZZ is inherently distinctive and that he may claim a 1985 priority date in connection with “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances.” Siding with Apple, the TTAB found that the company had successfully argued that it was entitled to a 1968 priority date based on a trademark registration it acquired from Apple Corps, the Beatles’ record company, in 2007. That registration covers the mark APPLE for “[g]ramophone records featuring music” and “audio compact discs featuring music.” The TTAB found that Apple was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corps’ 1968 use of APPLE.
Bertini appealed, and the U.S. Court of Appeals for the Federal Circuit reversed, holding that Apple could not tack back to 1968 since the goods/services in the earlier APPLE registration – “gramophone records featuring music” and “audio compact discs featuring music” – and those in the subsequently filed APPLE MUSIC application – including the production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances – are not “substantially identical.” The court held that the goods/services need not be “completely” identical for tacking to be permitted, but “the new goods or services [must be] within the normal evolution of the previous line of goods and services.”
While Apple may be able to tack its “production and distribution of sound recordings” services based on the “gramophone records featuring music” in the earlier registration (given the advances in music technology that have occurred), the court held that such tacking does not extend to broader goods/services like live music performances. “No reasonable person could conclude … that gramophone records and live musical performances are substantially identical,” the court held.