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IP/Entertainment Case Law Updates

Bertini v. Apple, Inc.

Trademark Trial and Appeal Board dismisses opposition to Apple’s registration of APPLE MUSIC mark for entertainment products and services, granting priority based on purchase of trademark rights from Beatles’ record company, Apple Corps Ltd., with first use dating back to 1968.  

Charles Bertini opposed Apple Inc.’s attempt to register the standard character mark APPLE MUSIC for a broad category of musical, entertainment, and cultural events, products, and services on the grounds of priority and likelihood of confusion. Bertini asserted common law rights in the mark APPLE JAZZ for a similar array of musical and entertainment services, based on his use dating back to 1985 of the mark in connection with his Central New York jazz band and record label. Apple also asserted priority pursuant to its purchase of trademark rights in the mark APPLE from Apple Corps Ltd., the company originally formed by the Beatles that has continuously produced and distributed the band’s music and films dating back to at least 1968. Apple also challenged Bertini’s mark as primarily merely geographically descriptive and lacking in secondary meaning due to its association with Cortland County, known for the Cortland apple. The Trademark Trial and Appeal Board ultimately ruled in a non-precedential opinion that Apple had priority based on tacking to the Apple Corps Ltd.’s APPLE mark, and dismissed Bertini’s opposition on that ground.

Both parties raised a litany of evidentiary issues and objections to each other’s evidence and briefings, including on the grounds of hearsay, relevance, timeliness, lack of priority and lack of personal knowledge. The TTAB disposed of all of these, relying on Board precedent granting it the ability to weigh the relevance and strength or weakness of evidence, and accord it “whatever probative value the subject testimony and evidence merit.” The Board previously granted opposer’s motion for summary judgment, in part, with respect to the issue of likelihood of confusion. The Board also confirmed that Bertini had standing to oppose Apple’s registration, based on his own use of and attempts to register APPLE JAZZ, and that the issue of priority would determine the case, as consumer confusion was likely given the largely overlapping services.

The TTAB then traced Bertini’s use of the APPLE JAZZ mark, first as the name of his jazz band known for performing at concerts and festivals in and around Cortland, New York, back to at least June of 1985. Bertini had testified that he chose the name because of the connection to “Cortland apples,” grown in Cortland County and around central New York. Eventually, Bertini branched out into other musical enterprises and formed Apple Jazz Records in the mid-1990s in order to issue and distribute recordings of his work as an independent musician, as well as the work of other musicians. The Board rejected Apple Inc.’s claim that APPLE JAZZ was primarily geographically descriptive because he performs jazz music in an area of New York known for producing apples. The TTAB ruled that the primary significance of the word APPLE alone was the fruit generally, not the area of New York sometimes referred to as “apple country,” and that Bertini’s APPLE JAZZ mark was inherently distinctive and not lacking in secondary meaning.

The TTAB then turned to Apple’s use of the mark and priority. It was undisputed that opposer had used the APPLE word mark in connection with personal computers, mobile communication and media devices, software, services, and accessories since at least 1977. However, its trademark rights in APPLE with respect to music-related goods and services dated back only to June of 2015, when it launched the APPLE MUSIC streaming service for publishing and distributing music. The Board was swayed, however, by Apple Inc.’s alternate priority theory based on acquiring trademark rights in the mark APPLE from Apple Corps Ltd., which used its own APPLE mark in connection with sound and video recordings dating back to 1968. The Board found that Apple Corps Ltd. had continuously produced and distributed sound and video recordings for the Beatles and other well-known recording artists such as James Taylor and Billy Preston under its record label and APPLE mark since at least 1968, and had registered the APPLE mark with the [USPTO] for “musical sound recordings.” It also determined that in 2007, Apple Inc. acquired all of Apple Corps Ltd.’s trademark and service mark rights in its APPLE marks, including its registrations (reportedly, for somewhere between $50 million and $500 million), and licensed back to Apple Corps Ltd. the right to continue using its marks, which use inures to Apple Inc.’s benefit. The Board ruled that Apple Inc. could gain priority by tacking its use of the APPLE MUSIC mark onto Apple Corps Ltd.’s use of the APPLE mark for music, because the parties’ respective goods and services were the same or similar, and the two marks were legal equivalents, creating the same commercial impression; essentially, the Board found that Apple Corps Ltd.’s APPLE mark was a modernization of the Apple Inc. APPLE mark. On this basis, the Board accorded Apple Corps Ltd. a priority date of at least as early as August of 1968 and dismissed the opposition proceeding.

Summary prepared by Melanie Howard and Jordan Meddy.
 
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