24 Oct “Tacking” Another Bite of the Apple… by William C. Yarbrough

Bertini vs. Apple Inc.

At least as early as June 2015, Apple Inc. began using ‘Apple Music’ and applied for the trademark (U.S. Application No. 86/659,444) in class 041 including several categories of music, events, live performances and entertainment. That same year, Charlie Bertini, a jazz musician, petitioned to cancel ‘Apple Music’ based on his common law use of the mark ‘Apple Jazz’ for concerts and festivals dating back 30 years, to the mid-eighties, and for sound recordings from his own label as far back as the mid-nineties.

The Trademark Trial and Appeals Board dismissed Bertini’s opposition.  Although the Board did find that Bertini’s common law mark was inherently distinctive and that Bertini could rightfully claim his earlier filing date, both parties agreed that there was an inherent likelihood that consumers would be confused as to the source of the marks. Yet, the two parties could not agree on the actual priority date.

Apple, Inc. argued that their acquisition of the mark ‘Apple’ from The Beatles catalog from Apple Corps’ Apple Records in 2007 (US Reg. No. 2034964) allowed Apple Inc. to claim priority dating back to 1968 for “[g]ramophone records featuring music” and “audio compact discs featuring music.”

Tacking

Apple relied on the legal theory that the party who first uses a distinctive mark in commerce has seniority. Further, Apple contended that a party may make certain “modifications to their marks over time without losing priority” via the mechanism known as “tacking”. Hana, 574 U.S. at 419, at 419-420. Yet, the party asserting this “tacking” principle is held to a strict standard wherein the old and new mark must “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’” Hana, 574 U.S. at 422 (quoting Van Dyne-Crotty, 926 F.2d at 1159).

The Board found Apple Corps used its ‘Apple’ mark continuously on “gramophone records”, as well as other recording formats, since at least August 1968 and that Apple, Inc. was entitled to “tack” its 2015 use of ‘Apple Music’ onto Apple Corps’ 1968 use of ‘Apple’ and thus Apple had priority over Bertini. In the Board’s finding, the Board allowed not only the ‘Apple Music’ mark to cover “gramophone records”, but all services listed in its application (which was particularly voluminous). The Board thereby dismissed Bertini’s opposition and further denied Bertini’s subsequent motion for reconsideration. Bertini Appealed.

The Appeal

The U.S. Court of Appeals for the Federal Circuit reversed the TTAB and decided that a trademark applicant cannot establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application. In the Court’s finding, the Court found “[A] trademark owner must show tacking is available for each good or service for which it claims priority” on the grounds that “[T]he trademark applicant cannot establish absolute priority for the full application simply by proving priority of use for a single service listed in the application.” Thereby Apple Corps’ 1968 use of “APPLE” for gramophone records “does not give Apple priority as of 1968 for live musical performances” where both the mark and the description of goods and services must be substantially identical, and each should be scrutinized to find if “tacking” truly applies. Here, the Court concluded, “[N]o reasonable person could conclude, based on the record before us, that gramophone records and live musical performances are substantially identical.”

As a result, ‘Apple Music’ was thereby abandoned January 17, 2024, reversing the previous notice of allowance of December 26, 2023, leaving Apple Inc. wondering if they should have “let it be” while affording Bertini a “long and winding road” to victory.

Written by William C. Yarbrough, Director of Intellectual Property at KMD Law