“The refusal of the TTAB to decide the Cancellation case, and the refusal of the USPTO to respond to Bertini’s Petition to the Director has injured, and continues to injure, Bertini. Mandamus is Bertini’s only means to correct the unlawful agency inaction.” – Bertini Petition for a Writ of Mandamus
The U.S. Court of Appeals for the Federal Circuit (CAFC) this week ordered Apple, Inc. and the U.S. Patent and Trademark Office (USPTO) to respond to a petition for writ of mandamus filed by the owner of the APPLE JAZZ trademark, who has been embroiled in a fight with Apple, Inc. over rights to the mark since 2016.
Charles Bertini, who owns APPLE JAZZ, petitioned the CAFC last week, asking the court to direct the USPTO to issue a final decision on its petition to cancel Apple’s mark, APPLE (Registration No. 4088195) for nonuse/ abandonment on the ground that Apple never used the mark in commerce for entertainment services listed in the Registration Certificate.
According to Bertini, the cancellation case has been in limbo at the Trademark Trial and Appeal Board (TTAB) for three years, “despite [the TTAB’s] policy and frequent public statements by top USPTO officials that it decides cases after trial in approximately ten weeks.” Furthermore, a Petition to the USPTO Director filed on May 4, 2023, has yet to be decided, “despite the fact that most Petitions to the Director are decided in approximately two months.”
Bertini’s case began in June of 2016, when he filed an opposition against Apple, Inc.’s Trademark Application No. 86/659,444 for APPLE MUSIC, which the company had been using since 2015, when it launched its music streaming service. Bertini 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 the opposition 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.
But in April 2023, the CAFC said the TTAB had 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. The court then denied Apple’s request for rehearing in July.
In August, Apple filed a motion to amend its trademark application for APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB), asking the Board to allow it to remove “live performance services, as well as related services,” from the application. Bertini subsequently filed an opposition, arguing that Apple’s motion before the TTAB is essentially seeking the same relief that it was denied by the CAFC. A decision is still pending.
In the latest petition to the CAFC, Bertini said he has exhausted his administrative remedies and mandamus is appropriate. He reached out to his member of congress, Val Demings, in 2022, and asked her to write the USPTO to ask it to decide the cancellation case. Demings did and the Office issued Suspension Order shortly after. That Order stated that “Opposer has not established the necessary element of priority”, so “the Board has suspended the cancellation proceeding until the appeal of the opposition case is completed.” However, the CAFC subsequently issued its decision and there has still been no movement on the cancellation case.
Bertini also requested a “Listening Session” with USPTO Director Kathi Vidal, but to date has received no substantive response. He also requested constituent services from Senator Marco Rubio; wrote directly to Chief Administrative Law Judge Gerard Rogers; and petitioned for the Director to decide the case, all to no avail.
The petition presents the following specific questions:
- Did the TTAB fail to decide the Cancellation for a valid reason?
- Was the Cancellation case suspended for a valid reason?
- Did the TTAB fail to decide Bertini’s Motion for Reconsideration of the Suspension Order for a valid reason?
- Did the TTAB act in an arbitrary and capricious manner by failing to decide the Cancellation which was marked “Ready for Decision” on February 23, 2021?
- Does the TTAB’s and USPTO’s failure to decide the case constitute a violation of the Administrative Procedure Act at 5 U.S.C. § 706(1), and §§ 706(2)(A)-(E).
Bertini is not asking the CAFC to direct the USPTO to decide the case in any particular way, but just to decide it. The petition explained:
“The refusal of the TTAB to decide the Cancellation case, and the refusal of the USPTO to respond to Bertini’s Petition to the Director has injured, and continues to injure, Bertini. Mandamus is Bertini’s only means to correct the unlawful agency inaction….
The ongoing and specific injuries to Bertini, a sole proprietor, are that he is unable to register his trademark, and he has been embroiled in continuous litigation against a large company represented by 14 lawyers for three large law firms for more than seven years due to the shenanigans of the USPTO and the TTAB.”
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