Bertini v. Apple Inc.
21-2301 Document: 75 Page: 1 Filed: 04/04/2023 (2023)
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Rule of Law:
The doctrine of trademark tacking, which allows a trademark owner to retain an earlier priority date for a modified mark, is strictly applied and requires not only that the old and new marks create the 'same, continuing commercial impression,' but also that the goods or services on which they are used be 'substantially identical,' meaning they fall within the normal evolution of the previous line of goods or services. Tacking for one good or service in an application does not automatically grant priority for all other goods or services listed.
Facts:
- Charles Bertini, a professional jazz musician, began using the mark APPLE JAZZ in connection with festivals and concerts on June 13, 1985.
- In the mid-1990s, Charles Bertini started using APPLE JAZZ to issue and distribute sound recordings under his record label.
- Apple Inc. filed Trademark Application No. 86/659,444 to register the standard character mark APPLE MUSIC for various services, including production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances.
- Apple Inc. began using the mark APPLE MUSIC on June 8, 2015, with the launch of its music streaming service.
- Apple Inc. purchased Apple Corps' (the Beatles' record company) Registration No. 2034964 in 2007, which covered the mark APPLE for gramophone records and audio compact discs and claimed a date of first use of August 1968.
Procedural Posture:
- Apple Inc. filed Trademark Application No. 86/659,444 to register the mark APPLE MUSIC.
- Charles Bertini filed a notice of opposition to Apple Inc.'s application with the Trademark Trial and Appeal Board (TTAB), arguing that APPLE MUSIC would likely cause confusion with his common law trademark APPLE JAZZ.
- The TTAB issued a final decision dismissing Bertini’s opposition, finding that Bertini’s common law mark APPLE JAZZ was inherently distinctive with a priority date of June 13, 1985, for live musical performances, but ruling that Apple Inc. was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corps' 1968 use of APPLE, thereby giving Apple Inc. priority over Bertini for all services listed in its application.
- The TTAB denied Bertini's subsequent motion for reconsideration.
- Charles Bertini (Appellant) appealed the TTAB’s final decision to the United States Court of Appeals for the Federal Circuit.
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Issue:
Does the doctrine of trademark tacking allow an applicant to claim an earlier priority date for all goods and services listed in a trademark application if it can establish tacking for only one good or service, or must the goods or services for which tacking is sought be 'substantially identical' to the original goods or services, representing a normal evolution, for tacking to apply?
Opinions:
Majority - Moore, Chief Judge
No, the doctrine of trademark tacking does not allow an applicant to claim an earlier priority date for all goods and services in an application based on tacking for only one good or service; rather, tacking requires that the goods or services themselves be 'substantially identical' and represent a normal evolution from the original. The court reversed the Board's decision, holding that the standard for tacking is strict and requires both the old and new marks to create the 'same, continuing commercial impression' (be 'legal equivalents') and the goods or services to be 'substantially identical.' The Board legally erred by permitting Apple to claim absolute priority for all services listed in its application based on showing priority for only one service. The court clarified that a trademark owner must show tacking is available for each good or service for which it claims priority. For goods or services to be 'substantially identical' for tacking purposes, they must be within the normal evolution of the previous line of goods or services, and consumers must generally expect the new goods or services to emanate from the same source as the previous ones. The court found that no reasonable person could conclude that gramophone records and live musical performances are 'substantially identical' or within the normal product evolution of each other. Therefore, Apple could not tack its use of APPLE MUSIC for live musical performances onto Apple Corps' 1968 use of APPLE for gramophone records. Since Bertini had established priority for APPLE JAZZ for live musical performances as of June 13, 1985, and Apple's priority for APPLE MUSIC for the same services could only go back to 2015, Bertini's opposition was sustained.
Analysis:
This case significantly clarifies the strictures of trademark tacking, particularly for applications encompassing a broad array of goods and services. By requiring a service-by-service assessment of tacking eligibility and establishing the 'substantially identical' standard for goods or services, the Federal Circuit prevents applicants from leveraging narrow, historical uses to assert broad priority claims for unrelated or non-evolving services. The decision reinforces that trademark rights are tied to the specific goods and services offered and their natural market evolution, promoting fairness in priority disputes and potentially increasing scrutiny on multi-service trademark applications seeking to rely on tacking.
