Apple Tells TTAB it Should be Allowed to Amend APPLE MUSIC Application

On August 1, Apple filed a motion to amend its trademark application for the mark APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB) following its recent loss at the U.S. Court of Appeals for the Federal Circuit (CAFC). Apple is asking the TTAB to allow it to remove “live performance services, as well as related services,” from the application in order to get around the CAFC’s ruling and since the Opposer, Charles Bertini, did not make the argument on which the ruling was based before the TTAB.

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. 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.

Bertini in April won his appeal of that decision to the CAFC, which 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.

In July, the CAFC denied Apple’s request that the court rehear the decision in order to direct the TTAB to narrow the services listed in the trademark application so that it could proceed to registration.

“Because Apple had no reason to anticipate the Federal Circuit would base its decision on Opposer’s prior use of APPLE JAZZ for live musical performances, as this argument was not advanced by Opposer and was inconsistent with prior Board authority, Apple now seeks to amend the Application to remove live performance services, as well as related services,” said Apple in the recent motion to the TTAB.

Counsel for Bertini said they plan to respond and oppose the motion.