4-12-23 Apple, the Beatles and a Jazz Man: A Rare Trademark Tacking Case of First Impression

Posted on April 12, 2023

The term "trademark tacking" refers to making relatively minor changes to a trademark over time without losing priority. Trademark tacking is a bit of an obscure topic, but interesting facts and a surprisingly on point Federal Circuit manage to breathe new life into its jurisprudence in Charles Bertini v. Apple Inc., Federal Circuit, April 4, 2023.

Bertini v. Apple is an appeal by Charles Bertini from a final decision of the Trademark Trial and Appeal Board that dismissed Bertini's opposition to Apple's trademark application for APPLE MUSIC used with, among a number of other things, production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances. Bertini is a professional jazz musician and used the common law mark APPLE JAZZ with festivals and concerts since June 13, 1985. Building on his initial use, Bertini began in the 1990's to use APPLE JAZZ in conjunction with issuing and distributing sound recordings under his record label. In light of this, Bertini filed his opposition to Apple's application for APPLE MUSIC.

In Bertini's favor, the Board found the mark APPLE JAZZ to be inherently distinctive with a priority date of June 13, 1985 for use in connection with arranging, organizing, conducting, and presenting concerts and live musical performances, which finding was undisputed on appeal. Further, the parties agreed that there was a likelihood of confusion between their respective uses of APPLE JAZZ and APPLE MUSIC. The sole issue on appeal was which party had priority of use.

Here is where the facts get interesting. Apple's use of APPLE MUSIC did not begin until June 8, 2015, a veritable gulf of dates of use compared to that of APPLE JAZZ, spanning just shy of 30 years. If the facts stopped there, it would be a slam dunk win for Bertini. However, like a magician, Apple pulled a rabbit out of a hat when it argued it was entitled to a priority date of August 1968. Based on what, you might be asking yourself. Apple's argued entitlement was based on its purchase of a trademark registration from Apple Corps, the Beatle's record company, in 2007, which covered the mark APPLE for "gramophone records featuring music" and "audio compact discs featuring music," with a date of first use of August 1968.

Agreeing with Apple, the Board held Apple was entitled to tack its use of APPLE MUSIC in 2015 onto Apple Corps' use in 1968 of APPLE, thus finding Apple had priority of use over Bertini. In light of that finding, the Board dismissed Bertini's opposition and denied a subsequent motion for reconsideration. Bertini then filed this appeal with the Federal Circuit.

On appeal, Bertini challenged the Board allowing Apple to tack its use of APPLE MUSIC onto that of the Beatle's record company, continuing to argue that APPLE JAZZ has priority over Apple's use of APPLE MUSIC. The Federal Circuit explained that, based on consumers changing tastes, views and response to a mark over time, trademark owners update their marks to maintain its appeal to consumers. For this reason, tacking is allowed. If tacking was not allowed, any changes, updates, modernization, etc. of a trademark would affect its priority, because it would technically be a different mark. However, the allowance for tacking is limited in application and scope; "strict" in the words of the Federal Circuit. The trademark owner must show the old mark and the new mark "create the same, continuing commercial impression," which is fact based, citing the Supreme Court's decision in Hana Fin., Inc. v. Hana Bank, 574 U.S.418 (2015). The Federal Circuit further explained that the commercial impression of a mark is "the meaning or idea it conveys or the mental reaction it evokes," citing Hana, including information the mark conveys regarding the source (i.e., the mark's owner, regardless of whether the consumer actually knows who the owner is).

The Court aptly summed its case law on tacking, stating that "[o]ur cases demonstrate the limited reach of the tacking doctrine" and stated that "[o]ther circuits uniformly apply the tacking doctrine narrowly." The Court further stated that "[w]hile rare, tacking can apply in situations where the marks are sufficiently similar such that a consumer would understand the two mark identify the same source." The court framed the case as raising "… a question of first impression regarding the appropriate tacking standard in the registration context: whether a trademark applicant can 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." (Emphasis in original.)

The Federal Circuit pointed out that Apple's application for APPLE MUSIC covers 15 broad categories of services, including production and distribution of sound recordings, presenting live musical performances and providing websites featuring entertainment and sports information. Yet, Apple tried to argue in favor of tacking its use of APPLE MUSIC onto the Beatles' record company's use of APPLE, which use was only in one of the 15 categories; gramophone records featuring music and audio compact discs featuring music. The Board had held that "[i]t is sufficient to find priority as to any goods or services encompassed by the application or registration."

The Federal Circuit wholeheartedly disagreed with the Board, finding its holding to be "legal error," a high bar to meet, but the Board managed to reach it. The Federal Circuit was clear that, to allow tacking, the trademark owner must show tacking is available for each good or service for which the owner claims priority, not just one (presumably, unless there is only one good or service in the application). In the court's view, the Board conflated the tacking standard with the opposition standard, which allows an opposer to stop "… a trademark application in full by proving priority of use and a likelihood of confusion for any of the [goods or] services listed in the trademark application[,]" citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336 (CCPA 1981). In Tuxedo Monopoly, the dispute was the use of the mark MONOPOLY on clothing, including T-shirts, and the famous identical mark for the classic board game. The CCPA (predecessor court to the Federal Circuit) in Tuxedo Monopoly affirmed the Board's decision sustaining the opposition where the opposer showed the applicant’s use of the mark on clothing would likely cause confusion with opposer’s mark, where the registration for board games was famous and used on collateral products, albethey different products from clothing, such as tumblers, coasters, jigsaw puzzles and rugs (as noted in the dissent).

However, the Federal Circuit pointed out, the reverse is not true. The trademark applicant cannot establish absolute priority for the "full" application, i.e., on with two or more goods or services in different categories, simply by proving priority of use for a single good or service listed in the application. Thus, Bertini could win the opposition by showing priority of use for APPLE JAZZ for any single good or service listed in Apple's application for APPLE MUSIC. Based on that standard, the Federal Circuit went even further and found an overlap of two services listed in the application: production and distribution of sound recordings; and arranging, organizing, conducting and presenting live musical performances. Notably, the Federal Circuit pointed out that "[e]ven assuming Apple is entitled to tack its use of APPLE MUSIC for production and distribution of sound recordings onto Apple Corps’ 1968 use of APPLE for gramophone records, this does not give Apple priority as of 1968 for live musical performances. Nor does it give Apple a 1968 priority date for the laundry list of other services in its application."

In its typical fashion, the Federal Circuited skirted several issues; the first in a footnote, the "… question as to whether Apple - to successfully defeat Bertini’s opposition - must establish that the full scope of the goods and services listed in its current application is entitled to tacking, or whether simply tacking just to the services overlapping with Bertini’s use of APPLE JAZZ is sufficient. We need not decide that question because, here, it is enough to conclude that Apple, as explained infra, is unable to tack back for live musical performances." The Federal Circuit also sidestepped the issue of the effect of Apple, one of the largest companies in the world, based on market capitalization, being a different company than Apple Corps. Moreover, the Federal Circuit observed that "[o]ur tacking cases have focused on whether a trademark owner can tack two different marks which have been used for the same goods or services. We have not addressed the appropriate standard for tacking uses on different goods or services." (Emphasis in original.) Hence, Bertini v Apple leaves open all three of these issues.

As to the level of overlap of goods and/or services, the Federal Circuit agreed with the Board and the parties that the goods or services must be "substantially identical[,]" rather than identical. The Federal Circuit gave an example to justify the lower standard; namely, "… music recording formats have changed over time as technology has improved - from gramophone records, to cassettes, to compact discs. A trademark owner should not lose priority simply because it updates the medium through which it distributes musical recordings, so long as consumers would associate these various music formats as emanating from the same source."

Further explaining, the Federal Circuit held that "[g]oods and services are substantially identical for purposes of tacking where the new goods or services are within the normal evolution of the previous line of goods or services. This inquiry depends, at least in part, on whether consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services." (Emphasis added.) This holding better explains the outcome in Tuxedo Monopoly; that is, even though General Mills itself had not ventured into clothing (including T-shirts), it had used its mark with some collateral products and T-shirts were considered to be within the "normal evolution" of board games. In this case, the effect of the holding is that Apple would have to show that live musical performances are substantially identical to gramophone records, which are objectively not substantially the same. Thus, the Federal Circuit held that Apple could not tack its use of APPLE MUSIC for live musical performances onto the Beatles' record company's use in 1968 of APPLE for gramophone records and reversed the Board's dismissal of Bertini's opposition, expressly without vacating and remanding to the Board, because no reasonable person could find the two services to be substantially the same.

While Bertini v Apple leaves several issues regarding trademark tacking to future cases, the decision does clarify how tacking should be considered in cases where the goods and/or services of the opposer overlap with at least one of an applicant's multiple categories of goods and/or services in their application.

Wayne F. Reinke