After a nearly five-year battle, Apple, Inc. (“Apple”) prevailed in a U.S. PTO Trademark Trial & Appeal Board (“Board” or “TTAB”) Opposition proceeding initiated by Charles Bertini (“Bertini”) over its APPLE MUSIC trademark.
Apple filed U.S. Serial No. 86/659,444 for “APPLE MUSIC” (“Apple’s Mark”) in connection with various entertainment services on June 11, 2015. Since its filing, APPLE MUSIC became one of the biggest music and video streaming services on the market, with over 75 million songs available on its platform. On September 6, 2016, Bertini, also known by his professional name as APPLE JAZZ, filed a Notice of Opposition against Apple’s Mark based on priority and likelihood of confusion with its mark APPLE JAZZ (U.S. Serial No. 87/060,640) in connection with various entertainment services, which was filed on June 05, 2016. Bertini alleged it had used its mark in commerce since at least as early as June 5, 1986, in connection with “a wide variety of services, including those which are the same as or substantially identical to services intended to be offered by [Apple]”.
To prevail on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, based on a previously used mark, it is the opposer’s burden to prove both priority of use and likelihood of confusion by a preponderance of the evidence. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). Bertini alleged that he had acquired common law rights in the mark APPLE JAZZ for the services identified in his application “long prior” to any date on which Applicant may rely for the applied-for mark. Evidence showed Bertini first used his APPLE JAZZ mark in commerce on June 13, 1985, and has since offered APPLE JAZZ concerts in and around the Cortland, New York area. On the other hand, Apple has used the APPLE word mark in connection with personal computers and mobile communication and media devices, as well as with a variety of related software, services, and accessories since at least as early as 1977. Since the 1980s, Apple has used the APPLE word mark in connection with an audio player and audiorecording functionalities on its computers and mobile devices. The Board, however, found Apple’s audio player and audio-recording functionalities did not establish use of the APPLE word mark in connection with the services identified in its Trademark Application because they were insufficiently related.
Apple relied on an acquisition of trademark rights from 2007 to establish priority over Bertini. In 1963, the musical group The Beatles set up a United Kingdom corporation to produce and distribute the group’s music, under the name The Beatles Limited. By 1968, the name of the corporation was changed to Apple Corps Limited (“Apple Corps”). Since 1968, Apple Corps continuously used the APPLE word mark in connection with the production and/or distribution of sound recordings and film in the U.S. In 1997, Apple Corps registered the mark APPLE in typed form (U.S. Reg. No. 2,034,964) for “Gramophone records featuring music; [pre-recorded audio tape cassettes featuring music;] audio compact discs featuring music [; pre-recorded video tape cassettes featuring music] [; video laser discs featuring music],” claiming a date of first use of August 1968. In 2007 Apple Corps registered the mark APPLE in standard characters (U.S. Reg. No. 3,317,089) for, inter alia, “musical sound recordings.” In January of 2018, Apple acquired all of Apple Corps’ trademark and service mark rights in its APPLE marks (above-referenced). The Agreement assigned to Apple all Apple Corps’ APPLE marks, which were defined as “any Trademarks of [Apple] Corps or any Apple Corps Group Company that utilize or feature the word ‘apple’ in any form . . . and/or any symbols, designations, signs, logos, depictions or representations of an apple, in whole or in part[.]” Apple then granted back to Apple Corps a license to continue using the marks, which use inured to Apple’s benefit.
The Board found Apple could gain priority over Bertini by tacking rights Apple obtained from Apple Corps in the APPLE marks to Apple’s APPLE MUSIC mark. “‘[T]acking’ is a defense that must be pleaded to put opposer on notice of new matter that applicant is placing at issue (i.e., a mark previously used by applicant that is the legal equivalent of applicant’s opposed mark, and that provides the basis or applicant to claim prior use).” See H.D. Lee Co., Inc. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 (TTAB 2008). Tacking requires the acquired and later mark to be “legal equivalents” and have “the same or similar” goods or services marketed under the later mark. Therefore, by tacking the use of the APPLE mark by Apple Corps, Apple established use of the APPLE MUSIC mark for the “production and distribution of sound recordings” as early as August 1968.