Trademark owner APPLE JAZZ beats Apple in CAFC reversal of TTAB on tack doctrine

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“The affixing of a trademark to a good or service does not guarantee priority for any other good or service in the trademark application…. A trademark owner must demonstrate that tack is available for each good or service for which he claims priority on that ground. – CAFC

The trademark owner of APPLE JAZZ won its appeal from the Trademark Trial and Appeal Board (TTAB), which rejected its opposition to Apple, Inc.’s application to register the APPLE MUSIC trademark. The United States Court of Appeals for the Federal Circuit (CAFC) said the TTAB made a legal error in allowing Apple to claim absolute priority for all services listed in its application based on a show of priority for a service.

Apple filed trademark application no. 86/659.444 for APPLE MUSIC, which the company has used since 2015, when it launched its music streaming service. Charles Bertini, the owner of APPLE JAZZ, registered his trademark in upstate New York in 1991 for entertainment services, but began using the trademark much earlier, in 1985. Unaware that he did not have a federal registration, Bertini filed an appeal against Apple, Inc.’s federal registration of APPLE MUSIC in 2016, along with an application to register APPLE JAZZ with the USPTO.

Apple argued that it was entitled to a priority date of August 1968 based on the trademark rights purchased by Apple Corps, the Beatles’ record company, in 2007. Recording no. 2034964 by Apple Corps covers the APPLE trademark for “[g]ramophone records featuring music” and “audio compact discs featuring music” and claims an first use date of August 1968. The TTAB found that Apple Corps has used the APPLE trademark continuously on gramophones and other recording formats since 1968 and that Apple , Inc. was authorized to add its use of APPLE MUSIC to the 1968 APPLE use, thus granting it priority over the Bertini trademark.

On appeal, Bertini argued that the College erred and the CAFC agreed. “We believe that Apple cannot attribute its use of APPLE MUSIC for live musical performances to Apple Corps’ use of APPLE for gramophone records and that its application for registration of APPLE MUSIC should therefore be denied,” he wrote the court.

Toning allows a brand owner to make changes to their brand over time without losing priority. The standard for invoking the doctrine of veering, however, is rigorous. “The party seeking to veer bears the burden of displaying the old brand and the new brand ‘create the same continuous commercial impression’ so that consumers ‘regard both as the same brand,'” the court explained. The case at hand raised a first impression question about the appropriate tack standard in the context of trademark registration, the CAFC added. That is to say, “whether a trade mark applicant can prioritize every good or service in his application simply because he has priority by adding a single good or service listed in his application”. Apple argued that it should be given priority for all 15 categories of goods and services listed in its application if it can prioritize a good or service. Apple’s application listed the production and distribution of audio recordings, the presentation of live musical performances, the provision of websites with entertainment and sports information, among other services. The CAFC held:

“The Board made a legal error by allowing Apple to claim absolute priority for all services listed in its application based on a demonstration of priority for a service listed in the application. The addition of a sign for a good or service does not guarantee priority for every other good or service in the trademark application…. A trademark owner must demonstrate that tack is available for each good or service for which he claims priority on that ground.

The court further explained that the TTAB merged the tack standard with the opposition standard, where an opponent can block a trade mark by demonstrating likelihood of confusion or priority of use for any of the services listed, but “the the trademark applicant cannot establish absolute priority for the complete application simply by demonstrating the priority of use for a single service listed in the application. Bertini only needs to demonstrate the priority of use of APPLE JAZZ for any of the services listed in Apple’s application, Inc., and the CAFC found that the use of APPLE JAZZ overlaps with both the “production and distribution of sound recordings; and arranging, organizing, conducting, and presenting live musical performances. The court wrote:

“The Board improperly focused only on Apple’s ability to attack its use of APPLE MUSIC for the production and distribution of sound recordings and did not consider live musical performances. Even assuming that Apple is entitled to apply its use of APPLE MUSIC for the production and distribution of sound recordings to Apple Corps’ 1968 use of APPLE for gramophone records, that does not give Apple priority as of since 1968 for live musical performances. Nor does it give Apple a priority date of 1968 for the long list of other services in its application.

The court noted that its torturing cases have generally focused “on whether a trademark owner might tying two different marks that have been used for the same goods or services” rather than “the appropriate standard for tying uses on goods or different services”. Ultimately, it stated that new products or services for the purposes of the turnaround need not be identical, but must be “within the normal evolution of the previous line of products or services” for the purposes of the turnaround. Since “no reasonable person could conclude, on the basis of the record before us, that gramophone records and live musical performances are substantially identical”, the CAFC reversed the TTAB’s rejection of Bertini’s opposition to the Apple application to record APPLE MUSIC.

Eileen McDermott Eileen McDermott is managing editor of IPWatchdog.com. Eileen is a veteran legal and IP journalist, and no stranger to the world of intellectual property, having held editorial and management positions at […see more]

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