Apple Asks CAFC to Rehear APPLE MUSIC Trademark Application Case

Last week, Apple filed a petition for the U.S. Court of Appeals for the Federal Circuit (CAFC) to rehear a decision that effectively canceled the tech giant’s application to register the trademark APPLE MUSIC. The petition asks the court to rehear the case in order to direct the Trademark Trial and Appeal Board (TTAB) to narrow the services listed in the trademark application so that it can proceed to registration.

In April, the CAFC overturned a TTAB decision that dismissed an opposition brought by Charles Bertini, the owner of the trademark for APPLE JAZZ, against Apple’s trademark application.

Originally, the TTAB permitted the APPLE MUSIC trademark application because Apple was entitled to a priority date of August 1968 based on its trademark rights for the mark APPLE, which covers “[g]ramophone records featuring music” and “audio compact discs featuring music.”

However, the CAFC ruled, “the Board legally erred by permitting Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for one service listed in the application. Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application.”

Apple is asking the CAFC to remove “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances” from the services listed in the APPLE MUSIC trademark application in order to get around the ruling. Apple believes this would allow the application to proceed, as Bertini has not established priority over the other services listed in the application.

Apple filed Trademark Application No. 86/659,444 for APPLE MUSIC in 2015 for its music streaming service. Bertini has held the APPLE JAZZ trademark in New York since 1991 for entertainment services. Since he unknowingly did not have a federal registration, he filed an opposition against Apple, Inc.’s federal registration of APPLE MUSIC in 2016 and simultaneously applied to register APPLE JAZZ.

According to the CAFC website, petitions for rehearing are “rarely successful because they typically fail to articulate sufficient grounds upon which to grant them.”

Potential for Precedent

Apple’s counsel argues the appeal should be heard because it “requires an answer to a precedent-setting question of exceptional importance.”

In order to have Apple’s trademark application halted, Bertini only needed to prove that his trademark had priority of use for any of the services listed in Apple’s application. According to the CAFC, he was successfully able to prove that his APPLE JAZZ mark had priority over Apple’s application in the listed services of “production and distribution of sound recordings; and arranging, organizing, conducting, and presenting live musical performances.”

Now, Apple is seeking to remove these services from its application and it wants the CAFC to rule on how the TTAB should proceed in such circumstances. Apple’s counsel proposed the central question, “because the panel found the applicant’s priority lacking as to only one of several categories of services identified in its trademark application, should this matter be remanded to direct the (TTAB) to remove from the challenged application that one category, and allow the Application to proceed to registration on the remaining services?”

Apple argued that its case is strengthened by the fact that Bertini only had priority over one of the 15 categories of service listed in the APPLE MUSIC trademark application. Furthermore, Apple said that the denial of an application in this manner has the potential to deny an applicant a trademark for services to which it has priority.

Apple continued, “that result directly conflicts with the panel’s own reasoning and violates the notions of fairness and due process contemplated by the Trademark Rules, the Lanham Act, and federal litigation.”

No Notice

Apple’s second main argument is that it was not given notice that its application would be denied if it did not remove the live performance services. According to the petition, Apple was the first applicant subject to the new tacking standard, which the CAFC determined would be that an applicant does not have “priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application.”

Additionally, Apple wrote that Bertini “claimed generally to have priority as to the categories of services recited in the Application—the Live Performance Services were never specifically identified by either party.”

Therefore, Apple argued that it did not receive notice that its application would be denied if the overlapping services were not removed.

Apple concluded by stating that the CAFC decision would generally confuse future trademark applicants. According to the tech firm, the decision as it stands will hamper brands’ ability to secure later trademarks for goods or services related to those to which it has priority. Also, Apple believes that trademark applicants will be incentivized to file separate, individual applications for every good or service so that it can avoid priority conflicts that could tank a larger application.

“These consequences will undoubtedly place a significant burden on the USPTO, applicants, and trademark owners, and drastically complicate the application process and assessments of risk based on a patchwork of alleged rights—all of which will have meaningful impacts on the marketplace,” wrote Apple.

Cancellation Action

Separately, Bertini has filed a Cancellation action with the TTAB to cancel Apple’s Registration. No. 4088195 for APPLE, which both Apple and the USPTO have cited as an obstacle to registration of the APPLE JAZZ mark due to a likelihood of confusion between the marks. Bertini’s cancellation action is based on nonuse/ abandonment, arguing that Apple, Inc. never used the mark in commerce for entertainment services listed in the Registration Certificate.

The trial ended on February 23, 2021, but has yet to be decided, despite the TTAB’s statements that trials are usually decided in 12 weeks.

Bertini also filed a Motion for Reconsideration on February 17, 2022, but has not yet received a decision, despite motions also typically being decided within 12 weeks. Bertini’s Motion claims that “[t]hese actions by the TTAB demonstrate the appearance of bias in favor of Apple and they violate Bertini’s constitutional rights to Due Process of law.”

Bertini filed a Petition with U.S. Patent and Trademark Office Director Kathi Vidal on May 4, 2023, asking her to intervene and decide the case.

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Author: itchaz.gmail.com