APPLE JAZZ Owner Delivered Blow in Latest Stage of Battle with Apple

Professional trumpet player Charles Bertini has for now lost his latest bid to cancel trademark rights owned by Apple, Inc. covering the use of the company’s name in connection with entertainment services.

Bertini filed the lawsuit in the Northern District of California in June 2024. It was the latest effort in his nearly decade-long battle to obtain a federal trademark registration for APPLE JAZZ, a mark Bertini has used to market live entertainment since 1985.

Bertini’s application to register his common law mark for APPLE JAZZ, filed in June 2016, was refused due to a likelihood of confusion with Apple’s service mark APPLE and trademark application for APPLE MUSIC. Bertini and Apple’s marks were each filed within Class 41 for entertainment services. Although the U.S. Court of Appeals for the Federal Circuit ruled in April 2023 that Apple was not allowed to claim absolute priority for each of the services listed in its applications, the Trademark Trial and Appeal Board (TTAB) in March 2024 struck down Bertini’s petition to cancel the APPLE registration in Class 41 for failure to make a prima facie showing of abandonment.

Bertini appealed, but Apple filed a seldom-used Notice of Election at the Federal Circuit, which cancelled the appeal, and Bertini said put them in the position of having to file suit to cancel in a district court in order to challenge the TTAB decision.

In her Thursday, January 16, order granting Apple’s Motion to Dismiss Bertini’s complaint, Judge Yvonne Gonzalez Rogers said Bertini failed to “adequately plead facts meeting his prima facie burden to show abandonment.” According to Judge Rogers, the record at the TTAB contained specimens of use showing “use of the marks for education and entertainment” and that Apple had used the marks as of November 11, 2011. The order explained: “[P]laintiff does not plead facts alleging that the marks in use on November 11, 2011, were no longer being used three years after they were used. Therefore, plaintiff’s allegations are conclusory, unwarranted deductions of fact.”

The court did grant leave to amend within 21 days, which Bertini’s counsel said they will take. Apple’s motion to stay discovery is still pending before a magistrate judge, and a Joint Discovery Letter, which Apple called “a waste of court resources,” was submitted in December in which Bertini requested Apple produce certain documents showing use in commerce of the mark prior to the court’s decision on the motion to dismiss. Bertini contended in the letter that “the only reasonable conclusion for Apple’s eight-year delay in producing these documents is that it doesn’t have them.” Apple maintained that it agreed to produce all of the requested documents “to the extent relevant following the Court’s decision on Apple’s pending motion to dismiss.”