Tacking a Mark for One Good/Service Does Not Grant Priority for Every Other Good/Service in Trademark Applications

In Charles Bertini v. Apple Inc., No. 2021-2301 (Fed. Cir. April 4, 2023), the Federal Circuit reversed the TTAB’s finding that Apple’s use of APPLE MUSIC has priority over Bertini’s use of APPLE JAZZ.

Bertini, a professional jazz musician, filed a notice of opposition to Apple’s trademark application for APPLE MUSIC. Bertini argued that it would likely cause confusion with Bertini’s common law trademark APPLE JAZZ. The Board dismissed Bertini’s opposition, and Bertini appealed.

On appeal, the Federal Circuit held that 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 only one service. The CAFC noted that the Board failed to consider live musical performances, focusing instead only on Apple’s ability to tack its use of APPLE MUSIC for production and distribution of sound recordings. The CAFC held that there was no evidence, and no reasonable person could conclude that gramophone records are substantially identical to Apple’s live musical performances. Because Apple began using the mark APPLE MUSIC in 2015, Bertini has priority of use for APPLE JAZZ as to live musical performances.