Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Bertini v. Apple Inc., 2021-2301 (April 4, 2023), reversing the Trademark Trial and Appeal Board’s dismissal of Bertini’s opposition to Apple’s application to register the mark APPLE MUSIC.
Apple sought to register APPLE MUSIC for several services, including “presenting live musical performances”. Bertini, a jazz musician, opposed the application based on his prior use of the mark APPLE JAZZ in connection with festivals and concerts since 1985. The parties’ primarily disputed priority. While Apple did not use the mark APPLE MUSIC for live music performances until 2015, it argued it was entitled to 1968 priority date based on purchased rights covering the mark APPLE for “[g]ramophone records featuring music”. The Board held Apple was entitled to tack its 2015 use of APPLE MUSIC onto this prior use, giving it priority. Bertini appealed.
The Federal Circuit reversed. The Court noted that the question of “whether a trademark applicant can 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” is an issue of first impression. The Court answered the question in the negative, holding the Board legally erred by permitting Apple to claim priority for all services in the application based on a showing of priority for one. The Court explained that while tacking may have supported Apple’s priority claim for other listed services, Apple cannot tack its use of APPLE MUSIC for live musical performances onto the prior use of APPLE for gramophone records because goods or services must be substantially identical for tacking to apply and gramophone records are not substantially identical to live music performances. The Court acknowledged that a “trademark owner should not lose priority simply because it updates the medium through which it distributes musical recordings, so long as consumers would associate these various music formats as emanating from the same source.” But, the Court held, the new goods or services must be within the normal evolution of the previous line of goods or services, such that consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services. The Court found no evidence that a consumer would think live music performances are within the normal product evolution of gramophone records.