“Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application…. A trademark owner must show tacking is available for each good or service for which it claims priority on that ground.” – CAFC
The owner of the trademark for APPLE JAZZ has won his appeal from the Trademark Trial and Appeal Board (TTAB), which dismissed his opposition to Apple, Inc.’s application to register the mark APPLE MUSIC. The U.S. Court of Appeals for the Federal Circuit (CAFC) said the TTAB legally erred in allowing Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for one service.
Apple filed Trademark Application No. 86/659,444 for APPLE MUSIC, which the company has been using since 2015, when it launched its music streaming service. Charles Bertini, the owner of APPLE JAZZ, registered his mark in New York state in 1991 for entertainment services but began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for APPLE MUSIC in 2016, along with an application to register APPLE JAZZ with the USPTO.
Apple argued that it was entitled to a priority date of August 1968 based on trademark rights it purchased from Apple Corps, the Beatles’ record company, in 2007. Apple Corps’ Registration No. 2034964 covers the mark APPLE for “[g]ramophone records featuring music” and “audio compact discs featuring music” and claims a date of first use of August 1968. The TTAB found Apple Corps had continuously used the APPLE mark on gramophone records and other recording formats since 1968 and that Apple, Inc. was allowed to tack its use of APPLE MUSIC onto the 1968 use of APPLE, thus granting it priority over Bertini’s mark.
On appeal, Bertini argued that the Board erred and the CAFC agreed. “We hold Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records and that its application to register APPLE MUSIC must therefore be denied,” wrote the court.
Tacking allows the owner of a trademark to make modifications to their mark over time without losing priority. The standard to invoke the tacking doctrine, however, is strict. “The party seeking to tack bears the burden to show the old mark and the new mark ‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark,’” explained the court. The case at issue raised a question of first impression as to the appropriate tacking standard in the context of trademark registration, added the CAFC. Namely, “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.” Apple argued it should be granted priority for all of the 15 categories of listed goods and services in its application if it can establish priority for one good or service. Apple’s application listed production and distribution of sound recordings, presenting live musical performances, providing websites featuring entertainment and sports information, among other services. The CAFC held:
“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…. A trademark owner must show tacking is available for each good or service for which it claims priority on that ground.”
The court further explained that the TTAB conflated the tacking standard with the standard for oppositions, where an opposer can block a mark by proving likelihood of confusion or priority of use for any of the services listed, but “the trademark applicant cannot establish absolute priority for the full application simply by proving priority of use for a single service listed in the application.” Bertini needs only to prove priority of use for APPLE JAZZ for any of the services listed in Apple, Inc.’s application, and the CAFC found the use of APPLE JAZZ overlaps with both “production and distribution of sound recordings; and arranging, organizing, conducting, and presenting live musical performances.” The court wrote:
“The Board improperly focused only on Apple’s ability to tack its use of APPLE MUSIC for production and distribution of sound recordings and did not consider live musical performances. Even 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.”
The court noted that its tacking cases have generally focused “on whether a trademark owner can tack two different marks which have been used for the same goods or services” rather than “the appropriate standard for tacking uses on different goods or services.” It ultimately held that the new goods or services for purposes of tacking need not be identical but must be “within
the normal evolution of the previous line of goods or services” for purposes of tacking. Since “no reasonable person could conclude, based on the record before us, that gramophone records and live musical performances are substantially identical,” the CAFC reversed the TTAB’s dismissal of Bertini’s opposition to Apple’s application to register APPLE MUSIC.