APPLE JAZZ Trademark Fight Continues at CAFC

Following an order from the U.S. Court of Appeals for the Federal Circuit (CAFC) in November requiring that the U.S. Patent and Trademark Office (USPTO) and Apple, Inc. file responses to his petition for writ of mandamus, the owner of the trademark APPLE JAZZ has filed a reply of his own charging that “the USPTO is not sincere and has never been sincere about deciding this case.”

The latest briefs relate to a petition for writ of mandamus filed by Charles Bertini, owner of APPLE JAZZ, who has been embroiled in a fight with Apple over rights to the mark since 2016.

Bertini petitioned the CAFC in early November, asking the court to direct the USPTO to issue a final decision on its petition to cancel Apple’s mark, APPLE (Registration No. 4088195) for nonuse/ abandonment on the ground that Apple never used the mark in commerce for entertainment services listed in the Registration Certificate.

According to Bertini, the cancellation case has been in limbo at the Trademark Trial and Appeal Board (TTAB) for three years, “despite [the TTAB’s] policy and frequent public statements by top USPTO officials that it decides cases after trial in approximately ten weeks.” Furthermore, a Petition to the USPTO Director filed on May 4, 2023, has yet to be decided, “despite the fact that most Petitions to the Director are decided in approximately two months.”

In the opposition case, in April 2023 the CAFC said the TTAB had 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 one service. The court then denied Apple’s request for rehearing in July.

In August, Apple filed a motion to amend its trademark application for APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB), asking the Board to allow it to remove “live performance services, as well as related services,” from the application. Bertini subsequently filed an opposition, arguing that Apple’s motion before the TTAB is essentially seeking the same relief that it was denied by the CAFC. On November 9, the TTAB denied Apple’s motion to amend and terminated the opposition.

In Bertini’s reply brief of December 4, he rejected the USPTO’s and Apple’s claims that mandamus relief is not warranted because there are other marks that will bar his registration of APPLE JAZZ, disagreeing but stating that “this is not the correct place to have a discussion about that.” There are two other Apple marks that formed the basis for rejection of APPLE JAZZ and Bertini has only petitioned to cancel one of them, said the USPTO’s brief. Apple’sbrief explained that its Registration numbers 2,034,964 and 3,317,089 for the mark APPLE will still bar Bertini’s registration of APPLE JAZZ. The USPTO further argued that mandamus is not warranted since the Lanham Act does not provide a specific timeline for issuing cancellation decisions. The Lanham Act is “silent to any timetable,” said the Office’s brief.

But Bertini argued that “[t]his is a remarkable statement.” The brief continued:

“It effectively repudiates the PTO’s statutory obligation to decide cases. It is yet additional proof that this situation is extraordinary, because the United States government has taken the position that there is no time limit by which it must decide a contested legal case in its administrative court.”

Bertini again argued for relief because a) the case was first marked “Submitted for Final Decision” on February 23, 2021 and the Office’s policy is to decide cases in 10 weeks; b) the Suspension Order of February 2022 said the TTAB would decide the case after the CAFC appeal was decided, which it was on April 4, 2023; c) TTAB Judge Rogers then said in July 2022 that the Motion for Reconsideration would be “decided in due course”; d) the USPTO told legislatiors in letters of 2022 and 2023 that the case would be decided after Bertini’s appeal of priority was determined, which it was on April 4, 2023; and e) the Petition’s Office last stated the case would be decided by mid-October 2023 and it is now December.

Bertini concluded:

“Since suspension cannot be justified, the delay in deciding this case should be considered to have begun on February 23, 2021. The law doesn’t establish any timeframe to decide the case and the USPTO has demonstrated its strong position not to decide it, so without this Court’s intervention it may never issue a decision.”

Image Source: Deposit Photos
Author: Rawpixel
Image ID: 88152042