Friday, April 07, 2023

CAFC Reverses TTAB's APPLE JAZZ Dismissal Due to Error in Awarding Priority to Apple Inc.

The CAFC overturned the TTAB's decision [TTABlogged here] dismissing Charles Bertini's Section 2(d) opposition to registration of APPLE MUSIC for a host of services, including the production and distribution of sound recordings and presentation of live music performances. The court ruled that the Board had erred in awarding priority to Apple (via tacking) over Bertini's use of the common law mark APPLE JAZZ for live musical performances. On a question of first impression, it held that a trademark applicant cannot establish 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 . Charles Bertini v. Apple Inc., Charles Bertini v. Apple Inc., 2023 U.S.P.Q.2d 407 (Fed. Cir. 2023). (Fed. Cir. April 4, 2023) [precedential].

Opposer Bertini's earliest date of use was in 1985, while Apple, Inc. has used the mark APPLE MUSIC since 2015, when it launched the APPLE MUSIC streaming service. Apple asserted that it acquired trademark rights in the mark APPLE from Apple Corps. in connection with sound recordings and films, with an August 1968 date of use, for gramophone records and audio compact discs featuring music, and that it therefore has priority for the services recited in its application "that are closely related to the production and distribution of sound recordings." The Board agreed.

The CAFC observed that "[t]he standard for a trademark owner to invoke tacking is strict." The party seeking to tack must show that the old mark and the new mark "create the same, continuing commercial impression, so that consumers 'consider both as the same mark.'" Hana, 574 U.S. at 422.  In other words the marks must be "legal equivalents." Id. 

Apple claimed priority for all 15 categories of services in its application by tacking on Apple Corps' 1968 use of APPLE for gramophone records. According to the Board, that was permissible, but the CAFC declared that to be legal error.

Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application. Cf. Van Dyne-Crotty, 926 F.2d at 1160 (“[I]t would be clearly contrary to well-established principles of trademark law to sanction the tacking of a mark with a narrow commercial impression onto one with a broader commercial impression.”). A trademark owner must show tacking is available for each good or service for which it claims priority on that ground.

The court found that the Board had conflated the tacking standard with the standard for Section 2(d) oppositions, where [a]n opposer can block a trademark application in full by proving priority and likelihood of confusion for any of the services listed in the trademark application. Tuxedo Monopoly. Thus, Bertini only needed to show that he has priority of use of APPLE JAZZ for any service listed in Apple’s application. "The reverse is not true."

Bertini had priority as to two of the services in Apple's application: production and distribution of sound recordings; and arranging, organizing, conducting, and presenting live musical performances. Even if Apple could tack its use of APPLE MUSIC for sound recordings onto Apple Corps' 1968 use of APPLE for gramophone records, "this does not give Apple priority for live musical performances," nor for the "laundry list" of other services in its application.

The CAFC then addressed the "scope of the tacking inquiry." Prior cases dealt with the standard for tacking two different marks used for the same goods or services. The appropriate standard for tacking uses different goods or services has not been addressed.

The Board has held that tacking requires that the new and old goods or services be "substantially identical." The court observed that this requires that "the new goods or services are within the normal evolution of the previous line of goods or services," and partly depends on "whether consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services."

Thus, to establish tacking, Apple had to show that live performances are substantially identical to gramophone records. Although tacking is a question of fact, the CAFC saw no need to remand to the Board for finding on the issue of tacking."

No reasonable person could conclude, based on the evidence of record, that gramophone records and live performances are substantially identical. Nothing in the record supports a finding that consumers would think Apple’s live musical performances are within the normal product evolution of Apple Corps’ gramophone records.

And so, the court reversed the Board's dismissal of Bertini's opposition.

Read comments and post your comment here.

TTABlogger comment: Seemingly makes tacking even stricter, but if you can get to a jury, anything can happen: witness the jury finding that HANA BANK could be tacked onto HANA OVERSEAS KOREAN CLUB for financial services.

Text Copyright John L. Welch 2023.


At 9:27 AM, Blogger Gene Bolmarcich, Esq. said...

Very confusing. In my experience "live musical performances" are routinely considered to be related to "musical recordings" (bands that perform live and also sell records), so why, if the standard for tacking is whether consumers would expect the goods/services to emanate from the same source (quoting the CAFC) could Apple NOT tack its rights for recordings onto live performances? The Court seemed to switch back and forth between two different standards for tacking..."substantially identical" on the one hand and a confusion based standard on the other hand. Very confusing, or did I say that already?

At 10:02 AM, Anonymous Anonymous said...

Re juries: Juries know nothing. They are the absolute worst in a trademark case. As you said when it comes to a jury "anything can happen."

Re Article 3 judges generally: The TTAB is completely out of step with article 3 judges. These folks (maybe less so with the Fed. Cir) deal with real world consequences - life and death stuff. They don't give a damn about our clients' trademarks, and as such tend to offer far less protection than the TTAB (whose members have made their life's work of this topic) are willing to give. The TTAB needs to get in line with article 3 thinking otherwise it becomes a farce (to the extent that it is not already). What's the value of a registered mark if a judge says that it is unenforceable in an infringement case.

At 10:31 AM, Anonymous Anonymous said...

I do not see that a stricter standard has been created here. The CAFC followed well established precedent. The mark must be legally requivalent and the prior goods must be the same. Changes to the product may be a consideration in determining whether the trademark owner has lost its rights as the senior user. A trademark owner who completely changed the type of goods sold under the mark would be in the same position as one who had never used the mark before. That is because trademark rights arise from the use of the mark to sell a particular type of goods. 1 MCCARTHY, supra note 10, § 24:11 (stating that trademark rights do not prevent the use of the same mark on goods sufficiently different that there is no likelihood of confusion). In Big Blue Products, Inc. v. IBM Corp., IBM’s application for the trademark BIG BLUE for typewriter ribbons was opposed by another firm that had used the same name for a variety of office equipment. Big Blue Prods., Inc. v. IBM Corp., 19 U.S.P.Q.2d (BNA) 1072, 1073 (T.T.A.B. 1991). IBM did not persuade the court, on its motion for summary judgment, that it was the senior user, even though it claimed to have been generally known as “Big Blue” for some time. Id. IBM had not sold typewriter ribbons under the BIG BLUE name until after the opposer had adopted the same term. Id. at 1074–75 The court acknowledged that IBM, because of its earlier use of BIG BLUE, might have the power to prevent the sale of related goods— goods, that is, that are different but close enough to be a source of confusion. (See id. at 1075 n.4. Even if they were different products, goods within the trademark owner’s “natural expansion of business” could still be confusing to consumers if they were sold under a similar mark. See id.) However, its own right to registration depended on its first use of the mark to sell “substantially identical” goods. See id. The standard of “substantially identical” goods has been repeated in a number of cases. (See, e.g., C.P. Interests, Inc. v. Cal. Pools, Inc., 283 F.3d 690, 700–01 (5th Cir. 2001) (“substantially identical” goods, not “substantially related” goods, is the “dominant terminology” for tacking, but the court left open whether the former is “a proper or improper approximation to the standard term”); Navistar Int’l Transp. Corp. v. Freightliner Corp., 52 U.S.P.Q.2d (BNA) 1074, 1078–79 (N.D. Ill. 1998) (noting that one of the questions to ask in tacking cases is whether “the marks [are] being used on the same or substantially similar goods or services”); DC Comics, Inc. v. Scholastic Magazines, Inc., 210 U.S.P.Q. (BNA) 299, 301 (T.T.A.B. 1980) (referring to the use of a prior registration to defend a later registration, where the marks and the goods are both “substantially identical”); Tillamook Country Smoker, Inc. v. Tillamook Cty. Creamery Ass’n, 333 F. Supp. 2d 975, 986 (D. Or. 2004) (same).)

The Board did not allow Frito-Lay to tack on its prior use of ONION FUNIONS to its current use of FUNYUNS, in part because of the difference between the crackers associated with the former term and the onion-flavored snacks associated with the latter. General Mills, Inc. v. Frito-Lay, Inc., 176 U.S.P.Q. (BNA) 148, 152 (T.T.A.B. 1972); but c.f., Jimlar Corp. v. The Army and Air Force Exch. Serv., 24 U.S.P.Q.2d (BNA) 1216, 1221 (T.T.A.B. 1992) (finding that boots and sneakers are, for purposes of tacking, “substantially identical” goods). In Adventis, the court noted that adding “.com” to a business name normally would preserve the commercial impression and allow tacking to occur, but that the case might be different if a traditional retailer were simultaneously converting to internet-only sales. Adventis, Inc. v. Consol. Prop. Holdings, Inc., No. 7:02CV00611, 2006 U.S. Dist. LEXIS 22436, at *19 n.11 (W.D. Va. Apr. 24, 2006). Hence, when a trademark changes courts will likely require a continuity of products as an independent criterion for tacking.


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