“Trademarking one good or service does not give priority to all other goods or services in a trade mark application. You must demonstrate that you are able to provisionally attach the
The owner of the APPLE JAZZ trademark has won an appeal from the Trademark Trial and Appeal Board (TTAB) that dismissed his challenge to Apple, Inc.’s application to register the trademark APPLE MUSIC. The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled that TTAB, based on his one-service priority designation, would claim absolute priority for all services listed in the application to Apple. It said it was legally wrong to allow it.
Apple has filed trademark application number 86/659,444 for APPLE MUSIC, which it has been using since 2015 when it launched its music streaming service. Charles Bertini, the owner of APPLE JAZZ, registered the trademark in New York State for entertainment services in 1991, but he began using the trademark in 1985, well before that. Unaware that he does not have federal registration, Bertini filed a complaint against Apple. Inc. filed his application to have his APPLE MUSIC registered with the federal government and APPLE JAZZ registered with his USPTO in 2016.
Apple claimed it was entitled to an August 1968 priority date based on the trademark rights it purchased from the Beatles’ record company, Apple Corps, in 2007. Apple Corps registration number 2034964 states:[g]The TTAB noted that the Apple Corps had continued to use the APPLE mark on gramophone records and other recording formats since 1968, and added Apple, Inc.’s use of APPLE MUSIC to the 1968 use of APPLE. As permitted, it took precedence over Bertini’s mark.
On appeal, Bertini argued that the board erred and the CAFC agreed. “We have determined that Apple’s use of APPLE MUSIC for live music performances cannot be added to the use of APPLE for gramophone records by the Apple Corps, and therefore the application for registration of APPLE MUSIC must be rejected. No,” the court wrote.
Temporary attachment allows the trademark owner to modify the trademark over time without losing priority. However, the criteria for invoking the Tucking Doctrine are strict. “Parties seeking to tack have the burden of showing that the old and new marks “produce the same lasting commercial impression” so that consumers “considered both as the same mark,” the court said. The case at issue raised the question of first impressions as to the appropriate standard of tacking in the context of trademark registration, the CAFC added. Is it possible to establish priority for all goods or services in the application simply because it has priority by provisionally attaching one product or service?” Apple argued that if priority could be established for one good or service, it should grant priority to all 15 categories of goods and services listed in the application. The book described production and distribution of sound recordings, provision of live music, provision of websites with entertainment and sports information, and other services. The CAFC has:
“By authorizing Apple to claim absolute priority for all services described in an application based on the priority indication of one service described in the application, the Board I made a legal mistake: trademarking one good or service does not give priority to all other goods or services in a trademark application…. You must show that provisional attachment is possible for each good or service claimed.”
The court further explained that the TTAB confuses the tacking standard with the challenge standard. An opponent can block a trademark by proving likelihood of confusion or priority of use of the listed services, but “a trademark applicant cannot establish absolute priority of a trademark.” A proof of preference for use of a single service listed in the application constitutes a complete application.” All you have to do is prove your preference for APPLE JAZZ. Arranging, organizing, conducting and presenting live music performances. The court wrote:
“The Board looked only at Apple’s ability to use APPLE MUSIC for the production and distribution of sound recordings, and did not consider live music. In addition, even assuming Apple has the right to use APPLE MUSIC for the production and distribution of sound recordings, this did not give Apple priority over live music performances in 1968. nor does it give Apple a priority date of 1968 for listing other services within the application.”
The court held that tacking cases were generally not “adequate criteria for tacking the use of different goods or services,” but that “a trademark owner can tack two different marks used on the same goods or services.” Ultimately, it decided that new goods or services intended for tacking need not be identical, but must be “in scope.”
For tracking purposes, the normal evolution of previous lines of goods or services”. The CAFC reversed his TTAB’s denial of Bertini’s challenge to Apple’s application for APPLE MUSIC registration.
