CAFC Denies APPLE JAZZ Mark Owner’s Mandamus Bid But Tells TTAB it Expects Cancellation Decision ‘Promptly’

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Charles Bertini’s petition for a writ of mandamus asking the court to order the U.S. Patent and Trademark Office (USPTO) to decide his trademark cancellation case against Apple, Inc.

According to Bertini, the cancellation case has been in limbo at the Trademark Trial and Appeal Board (TTAB) for more than 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.”

Bertini’s case began in June of 2016, when he filed an opposition against Apple, Inc.’s Trademark Application No. 86/659,444 for APPLE MUSIC, which the company had been using since 2015, when it launched its music streaming service. Bertini 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 the opposition 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.

But 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. According to Bertini, a Suspension Order of February 2022 in the cancellation proceeding said the TTAB would decide the case after the CAFC appeal was decided.

The mandamus petition was filed in November 2023 and argued that Bertini had exhausted his administrative remedies. Bertini reached out to his member of congress, who wrote the USPTO in 2022, and the Office issued a Suspension Order shortly after. That Order stated that “Opposer has not established the necessary element of priority”, so “the Board has suspended the cancellation proceeding until the appeal of the opposition case is completed.” However, there was still no movement on the cancellation case.

Bertini also requested a “Listening Session” with USPTO Director Kathi Vidal but received no substantive response. He also requested constituent services from Senator Marco Rubio; wrote directly to Chief Administrative Law Judge Gerard Rogers; and petitioned for the Director to decide the case, all to no avail.

The petition presented the following specific questions:

1. Did the TTAB fail to decide the Cancellation for a valid reason?
2. Was the Cancellation case suspended for a valid reason?
3. Did the TTAB fail to decide Bertini’s Motion for Reconsideration of the Suspension Order for a valid reason?
4. Did the TTAB act in an arbitrary and capricious manner by failing to decide the Cancellation which was marked “Ready for Decision” on February 23, 2021?
5. Does the TTAB’s and USPTO’s failure to decide the case constitute a violation of the Administrative Procedure Act at 5 U.S.C. § 706(1), and §§ 706(2)(A)-(E).

Bertini did not ask the CAFC to direct the USPTO to decide the case in any particular way, but just to decide it.

But in today’s Order, the court explained that “[w]hile it is true that Mr. Bertini filed these cancellation proceedings years ago, we cannot say that the Board clearly abused its discretion in staying these proceedings pending resolution of the opposition proceedings, particularly given Mr. Bertini himself argued in favor of their relatedness.”

The CAFC also said it’s not clear that the Board’s delay of the proceedings was unreasonable “as the Board has lifted the stay and indicated that a decision will be issued in due course, which we expect will be issued promptly.”

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