APPLE JAZZ Mark Owner Vindicated at CAFC with Denial of Apple’s Petition for Rehearing

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Apple, Inc.’s June request that the court rehear a decision that effectively canceled the tech company’s application to register the trademark APPLE MUSIC.

Apple had asked the court to rehear the case in order to direct the Trademark Trial and Appeal Board (TTAB) to narrow the services listed in the trademark application so that it could proceed to registration.

The owner of the trademark for APPLE JAZZ, Charles Bertini, in April won his appeal to the CAFC from the TTAB, which had dismissed his opposition to Apple, Inc.’s application to register the mark APPLE MUSIC. The CAFC said the TTAB legally erred in allowing Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for just one service.

Apple filed Trademark Application No. 86/659,444 for APPLE MUSIC, which the company has been using since 2015, when it launched its music streaming service. Charles Bertini, the owner of APPLE JAZZ, registered his mark in New York state in 1991 for entertainment services but began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for APPLE MUSIC in 2016, along with an application to register APPLE JAZZ with the USPTO.

Apple argued that it was entitled to a priority date of August 1968 based on trademark rights it purchased from Apple Corps, the Beatles’ record company, in 2007. Apple Corps’ Registration No. 2034964 covers the mark APPLE for “[g]ramophone records featuring music” and “audio compact discs featuring music” and claims a date of first use of August 1968. The TTAB found Apple Corps had continuously used the APPLE mark on gramophone records and other recording formats since 1968 and that Apple, Inc. was allowed to tack its use of APPLE MUSIC onto the 1968 use of APPLE, thus granting it priority over Bertini’s mark.

On appeal, Bertini argued that the Board erred and the CAFC agreed. “We hold Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records and that its application to register APPLE MUSIC must therefore be denied,” wrote the court.

In its rehearing petition, Apple asked the court to remove “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances” from the services listed in the APPLE MUSIC trademark application in order to get around the ruling. Apple said this would allow the application to proceed, as Bertini has not established priority over the other services listed in the application. The company’s counsel claimed the appeal should be heard because it “requires an answer to a precedent-setting question of exceptional importance.”

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