Bertini v. Apple Inc., No. 21-2301 (Fed. Cir. 2023)Annotate this Case
Apple sought to register the mark APPLE MUSIC for the production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances. Apple began using the mark in 2015 when it launched its music streaming service. Bertini, a professional musician, opposed the registration. Bertini has used the mark APPLE JAZZ in connection with festivals and concerts since 1985. In the mid-1990s, Bertini began using APPLE JAZZ to issue and distribute sound recordings. Bertini argued that Apple’s registration would likely cause confusion with Bertini’s common law trademark, 15 U.S.C. 1052(d).
The Trademark Trial and Appeal Board dismissed Bertini’s opposition, finding that Bertini’s common law mark APPLE JAZZ is inherently distinctive and that Bertini may claim a 1985 priority date in connection with “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances.” Apple successfully argued that it was entitled to a 1968 priority date based on trademark rights it purchased from Apple Corps, the Beatles’ record company, in 2007. That registration covers the mark APPLE for “[g]ramophone records featuring music” and “audio compact discs featuring music.” The Board found that Apple was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corps’ 1968 use of APPLE.
The Federal Circuit reversed. Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records and its application to register APPLE MUSIC must be denied.