Magistrate Judge Allows Two Narrow Fraud Theories to Proceed Against APPLE Trademark Registration

Magistrate Judge Virginia K. DeMarchi in the Northern District of California, San Jose Division, last week granted in part and denied in part a professional trumpet player’s motion for leave to amend his complaint that challenges Apple’s APPLE trademark for entertainment services. Judge DeMarchi concluded that the standard had only been met in limited respects and ruled that Bertini may pursue two narrow fraud claims, while his remaining theories were rejected.

As IPWatchdog previously reported, Bertini has a longstanding history of attempting to register the mark APPLE JAZZ, which he has used in connection with live entertainment services since 1985. After the Trademark Trial and Appeal Board (TTAB) rejected his petition to cancel Apple’s APPLE registration mark for entertainment services, Bertini filed suit in the Northern District of California challenging the registration on grounds including abandonment and fraud. Judge Yvonne Gonzalez Rogers denied Apple’s motion to dismiss Bertini’s abandonment claim in April 2025, finding that the allegations in his second amended complaint “provide sufficient, and plausible, multiple three-year timeframes in which it is possible that Apple did not use the mark in commerce.” The court also dismissed Bertini’s fraud claims without prejudice because they failed to plausibly allege Apple knowingly made false representations to the U.S. Patent and Trademark Office (USPTO). The court permitted Bertini to seek leave to amend if discovery on the abandonment claim uncovered evidence that Apple knowingly made false representations to the USPTO and intended to induce the agency’s reliance on those representations, the prima facie requirements for pleading fraud on the USPTO.

Most Fraud Allegations Dismissed

Though Judge DeMarchi allowed limited fraud claims to proceed, she concluded that the vast majority of Bertini’s proposed fraud allegations failed to satisfy the heightened pleading requirements for fraud on the USPTO and that the amendment would be futile. Bertini’s third proposed amended complaint challenged various representations Apple made to the USPTO over the course of obtaining and maintaining its APPLE registration, including allegations concerning a third-party APPLEJAXX mark, Apple’s 2011 Statement of Use, website specimens, Apple’s SEC filings, the company’s website site map, and later trademark maintenance filings. Among these, Judge DeMarchi found that Bertini failed to plausibly allege the falsity, knowledge, or intent to deceive necessary to allege fraud on the USPTO.

For example, the court rejected Bertini’s argument that Apple committed fraud by failing to disclose a third party’s use of the APPLEJAXX mark when Apple applied to register its APPLE trademark. The amended complaint alleged Apple knew of the APPLEJAXX application because it sought an extension of time to oppose it, but the court said “[m]ere knowledge of the existence of the APPLEJAXX mark is not sufficient to establish fraud.” The court explained that trademark applicants are generally required to disclose only conflicting rights that are clearly established, meaning the applicant possessed superior rights or that Apple believed it did.

Similarly, the court rejected Bertini’s theory that Apple fraudulently submitted its November 2011 Statement of Use while requesting an extension of time to file another statement of use if necessary. Judge DeMarchi concluded that “nothing was withheld or concealed from the USPTO,” and that the allegations did not plausibly support an inference that Apple intended to deceive the agency because both filings were disclosed to the USPTO. This left Bertini with two narrow fraud claims, described in detail below.

Court Allows Two Fraud Theories to Proceed

Though the magistrate judge rejected most of Bertini’s proposed amendments, she concluded that two narrow fraud theories were sufficiently pleaded to permit amendment. Both fraud theories center on website specimens Apple submitted to the USPTO related to maintaining its APPLE registration and whether those specimens falsely represented use of the mark in commerce.

The first surviving fraud theory centered on a specimen Apple submitted with a January 17, 2018, declaration from Apple’s Senior Intellectual Property Counsel, Thomas La Perle. Bertini alleged that the specimen of Apple’s website was not actually publicly available until several months later, relying in part on evidence from the Internet Archive’s Wayback Machine. Apple disputed those allegations, arguing Bertini misunderstood both the Safari browser and the Wayback Machine. Apple pointed to discovery saying it demonstrated the webpage existed before the declaration was submitted. The court declined to resolve this factual dispute at the pleading stage, and instead, viewing the allegations in the light most favorable to Bertini, Judge DeMarchi said that “if Apple fabricated the 2018 specimen and/or represented to the USPTO that the specimen was a screen shot of a publicly available web page, when it was not publicly available at that time, then that is sufficient to plausibly allege a material, false representation from which intent to deceive could be inferred.”

Additionally, the court permitted Bertini to pursue a fraud theory arising from Apple’s January 2022 trademark maintenance filing. Bertini alleged that Apple submitted a screenshot from a Canadian website as evidence of the use of its APPLE mark in U.S. commerce without telling the USPTO examiner that the specimen was from Canada. Judge DeMarchi reasoned that the examiner “easily might have overlooked” the fact that the Canadian URL was plainly visible in the submission (“www.apple.com/ca/education/k12/apple-professional-learning/”), and that the declaration could plausibly be read as affirmatively representing qualifying use in the U.S. commerce. Because of this, the court concluded that “an intent to deceive the examiner may reasonably be inferred,” allowing Bertini to proceed on this second theory.

Importantly, the court emphasized that it was not resolving the parties’ competing evidence regarding either specimen. Accepting Bertini’s allegations as true and drawing reasonable inferences in his favor, the court concluded only that those two theories plausibly stated fraud claims sufficient to survive at the pleading stage.

Bertini must file his third amended complaint by July 23, 2026. The parties have consented to all proceedings being heard and finally adjudicated by the magistrate judge.