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 information 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 guardian firm of Apple Data).  The businesses finally 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 by way of iTunes and different companies.  The 2 finally 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 file label.  Bertini filed an opposition to Apple’s TM registration which the TTAB finally dismissed.  On attraction right here, nonetheless, the Federal Circuit has reversed — holding that Apple had not confirmed a adequate proper of precedence.

Tacking: The fundamental concern 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 information” and different file codecs.  In its registration utility, Apple is searching for to register APPLE MUSIC for “15 broad classes of companies, from the manufacturing and distribution of sound recordings, to presenting reside musical performances, to offering web sites that includes leisure and sports activities info.”  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 assert absolute precedence for the entire companies listed in its utility primarily based on a exhibiting 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 total 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 reside musical performances and subsequently the applying should be rejected.  On remand, Apple will probably have the ability to slim its utility to solely companies which might be correctly coated by its project from Apple Data.

In her evaluation, Federal Circuit Chief Choose Moore repeatedly acknowledged that tacking is an exception to the unusual rule and ought to be narrowly construed.  American courts “uniformly apply the tacking doctrine narrowly.”  Though tacking permits for minor modifications in companies and within the mark itself, tacking requires “substantial id.” “[G]oods or companies should be considerably equivalent for tacking to use.” Id.  Within the context right here, as a way to have tacking for musical performances “Apple should subsequently present reside musical performances are considerably equivalent to gramophone information.” Though substantial id 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 may conclude … that gramophone information and reside musical performances are considerably equivalent.”

Accordingly, Apple isn’t entitled to tack its use of APPLE MUSIC for reside musical performances onto Apple Corps’ 1968 use of APPLE for gramophone information. As a result of Apple started utilizing the mark APPLE MUSIC in 2015, Bertini has precedence of use for APPLE JAZZ as to reside musical performances. We subsequently reverse the Board’s dismissal of Bertini’s opposition to Apple’s utility to register APPLE MUSIC.


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