Bertini v. Apple Inc.

Case: 21-2301 Document: 75 Page: 1 Filed: 04/04/2023
United States Court of Appeals
for the Federal Circuit
______________________
CHARLES BERTINI,
Appellant
v.
APPLE INC.,
Appellee
______________________
2021-2301
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91229891.
______________________
Decided: April 4, 2023
______________________
JAMES BERTINI, Denver, CO, argued for appellant.
ADAM HOWARD CHARNES, Kilpatrick Townsend &
Stockton LLP, Dallas, TX, argued for appellee. Also repre-
sented by WILLIAM BRYNER, Winston-Salem, NC;
THEODORE H. DAVIS, JR., Atlanta, GA; JOHN D. MAYBERRY,
SARA K. STADLER, New York, NY; JOSEPH E. PETERSEN,
Menlo Park, CA.
______________________
Before MOORE, Chief Judge, TARANTO and CHEN, Circuit
Judges.
Case: 21-2301 Document: 75 Page: 2 Filed: 04/04/2023
2 BERTINI v. APPLE INC.
MOORE, Chief Judge.
Charles Bertini appeals from a final decision of the
Trademark Trial and Appeal Board dismissing his opposi-
tion to Apple Inc.’s application to register the mark APPLE
MUSIC. For the following reasons, we reverse.
BACKGROUND
Apple filed Trademark Application No. 86/659,444 to
register the standard character mark APPLE MUSIC for
several services in International Class 41, including, inter
alia, production and distribution of sound recordings and
arranging, organizing, conducting, and presenting live mu-
sical performances. Bertini, a professional jazz musician,
filed a notice of opposition to Apple’s application. Bertini
has used the mark APPLE JAZZ in connection with festi-
vals and concerts since June 13, 1985. In the mid-1990s,
Bertini began using APPLE JAZZ to issue and distribute
sound recordings under his record label. Bertini opposed
Apple’s registration of APPLE MUSIC on the ground that
it would likely cause confusion with Bertini’s common law
trademark APPLE JAZZ. See 15 U.S.C. § 1052(d).
The Board issued a final decision dismissing Bertini’s
opposition. Bertini v. Apple, Inc., 2021 WL 1575580(T.T.A.B. Apr. 16, 2021) (Board Decision). The Board found
Bertini’s common law mark APPLE JAZZ is inherently dis-
tinctive and that Bertini may claim a priority date of June
13, 1985 for APPLE JAZZ in connection with “[a]rranging,
organizing, conducting, and presenting concerts [and] live
musical performances.” Id. at *9–12. These findings are
undisputed on appeal. The parties also agreed there was a
likelihood consumers would confuse Bertini’s use of APPLE
JAZZ with Apple’s use of APPLE MUSIC. Id. at *8. The
parties only dispute priority of use. Id.Apple began using the mark APPLE MUSIC on June
8, 2015, when it launched its music streaming service,
nearly thirty years after Bertini’s 1985 priority date. Apple
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BERTINI v. APPLE INC. 3
argued, however, it was entitled to an earlier priority date
of August 1968 based on trademark rights it purchased
from Apple Corps, the Beatles’ record company. Apple pur-
chased Apple Corps’ Registration No. 2034964 in 2007.
The ’964 registration covers the mark APPLE for
“[g]ramophone records featuring music” and “audio com-
pact discs featuring music” and claims a date of first use of
August 1968.
The Board found Apple Corps continuously used its
APPLE mark on gramophone records, and other recording
formats, since August 1968. Id. at *13–17. It further found
Apple was entitled to tack its 2015 use of APPLE MUSIC
onto Apple Corps’ 1968 use of APPLE and thus had priority
over Bertini. Id. at *18–21. The Board accordingly dis-
missed Bertini’s opposition and denied Bertini’s subse-
quent motion for reconsideration. Id. at *21. Bertini
appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
DISCUSSION
Bertini challenges the Board’s determination that Ap-
ple’s use of APPLE MUSIC has priority over Bertini’s use
of APPLE JAZZ. 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. Accordingly, we reverse.
I
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. In re Pacer Tech.,
338 F.3d 1348, 1349 (Fed. Cir. 2003). The tacking inquiry
is a question of fact. Hana Fin., Inc. v. Hana Bank, 574
U.S. 418, 422–23 (2015).
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4 BERTINI v. APPLE INC.
II
Trademark rights arise from the use of a mark in com-
merce. Hana, 574 U.S. at 419. The party who first uses a
distinctive mark in connection with particular goods or ser-
vices has priority over other users. Id. “Recognizing that
trademark users ought to be permitted to make certain
modifications to their marks over time without losing pri-
ority,” trademark owners may, in limited circumstances,
“clothe a new mark with the priority position of an older
mark.” Id. at 419–20. This doctrine is known as “tacking.”
Id. at 420.
We permit tacking because, without it, “a trademark
owner’s priority in his mark would be reduced each time he
made the slightest alteration to the mark, which would dis-
courage him from altering the mark in response to chang-
ing consumer preferences, evolving aesthetic
developments, or new advertising and marketing styles.”
Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d
1036, 1048 (9th Cir. 1999). Trademark owners often mod-
ernize and update their trademarks in response to a chang-
ing marketplace. See Sunstar, Inc. v. Alberto-Culver Co.,
586 F.3d 487, 496 (7th Cir. 2009) (recognizing the need for
trademark owners and their licensees to make “modest
changes in the appearance or wording of the trademark” to
respond to “unpredictable fluctuations in consumer re-
sponse”).
The standard for a trademark owner to invoke tacking
is strict. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926
F.2d 1156, 1160 (Fed. Cir. 1991), abrogated on other
grounds by Hana, 574 U.S. 418. 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.’” Hana,
574 U.S. at 422 (quoting Van Dyne-Crotty, 926 F.2d at
1159). In other words, the marks must be “legal
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BERTINI v. APPLE INC. 5
equivalents.” 1 Id. This standard requires showing more
than a likelihood of confusion between the two marks. Van
Dyne-Crotty, 926 F.2d at 1159. The commercial impression
of a trademark is “the meaning or idea it conveys or the
mental reaction it evokes,” including the information it
conveys with respect to source. Hana Fin., Inc. v. Hana
Bank, 735 F.3d 1158, 1164 (9th Cir. 2013) (quoting Gideon
Mark & Jacob Jacoby, Continuing Commercial Impression:
Applications and Measurement, 10 MARQ. INTELL. PROP. L.
REV. 433, 434 (2006)), aff’d, 574 U.S. 418; see also Spice Is-
lands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 1296
(CCPA 1974) (finding two marks create the same commer-
cial impression because they “convey to prospective pur-
chasers the same idea, same mental reaction, and same
meaning”).
Our cases demonstrate the limited reach of the tacking
doctrine. For example, in Van Dyne-Crotty, we rejected the
trademark owner’s attempt to tack its use of CLOTHES
THAT WORK for clothing apparel onto CLOTHES THAT
WORK. FOR THE WORK YOU DO for the same goods in
the wholesale rather than retail market. 926 F.2d at 1158–
60. We affirmed the Board’s finding that the marks create
different commercial impressions because consumers
“would clearly differentiate them” based simply on the vis-
ual appearance of the marks. Id. at 1159–60. In Ilco Corp.
v. Ideal Security Hardware Corp., our predecessor court de-
termined the trademark owner was not entitled to tack its
use of HOME PROTECTION CENTER for display racks
onto its prior use of HOME PROTECTION HARDWARE
for the same goods. 527 F.2d 1221, 1224–25 (CCPA 1976).
The two marks created different commercial impressions
1 Although the terminology “legal equivalents” is
typically used, the Supreme Court has made clear this is a
factual question. Hana, 574 U.S. at 422–23 (abrogating
prior decisions holding this was a legal question).
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6 BERTINI v. APPLE INC.
even when applied to the same goods because the former
mark “signifies a unitary aggregation of goods related to
home protection,” while the latter mark “refer[s] to the
hardware itself.” Id.
Other circuits uniformly apply the tacking doctrine
narrowly. For example, in Jim O’Neal, the trademark
owner could not tack its angular O’ mark onto its rounded
O’ mark because the two marks were materially different
in appearance. One Indus., LLC v. Jim O’Neal Distrib.,
Inc., 578 F.3d 1154, 1161–62 (9th Cir. 2009). In Data Con-
cepts, “DCI” and the stylized mark “dci” were not legal
equivalents because “the two marks do not look alike.”
Data Concepts, Inc. v. Digit. Consulting, Inc., 150 F.3d 620,
623–24 (6th Cir. 1998), abrogated on other grounds by
Hana, 574 U.S. 418; see also George & Co. v. Imagination
Ent. Ltd., 575 F.3d 383, 402 (4th Cir. 2009) (determining
the mark LEFT CENTER RIGHT and the abbreviated
mark LCR are not legal equivalents for tacking purposes
because the marks are not confusingly similar and “look
and sound different”).
While rare, tacking can apply in situations where the
marks are sufficiently similar such that a consumer would
understand the two marks identify the same source. For
instance, in American Security Bank v. American Security
& Trust Co., the trademark applicant could tack its use of
AMERICAN SECURITY BANK for banking services onto
its prior use of AMERICAN SECURITY for the same ser-
vices. 571 F.2d 564, 567 (CCPA 1978). The court deter-
mined the two marks were legal equivalents because “the
word ‘bank’ is purely descriptive and adds nothing to the
origin-indicating significance of AMERICAN SECURITY.”
Id. Similarly, in Hana Financial, Inc. v. Hana Bank, the
Ninth Circuit held the jury reasonably concluded Hana
Bank could tack its use of the mark HANA BANK for fi-
nancial services onto its prior use of HANA OVERSEAS
KOREAN CLUB for the same services. 735 F.3d at 1166.
Hana Bank (a well-known Korean bank) had previously
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BERTINI v. APPLE INC. 7
used its HANA OVERSEAS KOREAN CLUB mark in Eng-
lish next to its HANA BANK mark in Korean on advertise-
ments in the United States. Id. at 1166–67. In this
context, it was reasonable for a jury to find that ordinary
consumers (i.e., Korean-speaking consumers familiar with
Hana Bank’s presence in Korea) would associate HANA
BANK with the same source as HANA OVERSEAS
KOREAN CLUB. Id. at 1167 (“‘Hana’ was arguably the
most significant portion of the trade name, as the ordinary
purchasers would have then made the association between
the English word ‘Hana’ and the Bank’s Korean name.”).
III
This case raises a question of first impression regard-
ing the appropriate tacking standard in the registration
context: whether a trademark applicant can establish pri-
ority for every good or service in its application merely be-
cause it has priority through tacking in a single good or
service listed in its application. We hold it cannot. Bertini
argues the Board erred by only considering whether Apple
can tack its use of APPLE MUSIC for production and dis-
tribution of sound recordings—one of several services listed
in Apple’s application. Apple responds that its application
should be granted as to all listed goods or services if it can
establish priority through tacking in any one of those goods
or services. We do not agree.
Apple seeks to register its APPLE MUSIC mark for 15
broad categories of services, from the production and dis-
tribution of sound recordings, to presenting live musical
performances, to providing websites featuring entertain-
ment and sports information. Apple attempts to claim pri-
ority for all of these services by tacking onto Apple Corps’
1968 use of APPLE for gramophone records. The Board
found Apple was 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
and thus may claim priority for all of the services listed in
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8 BERTINI v. APPLE INC.
its application. Board Decision, 2021 WL 1575580, at *18–
21; see also id. at *8 (“It is sufficient to find priority as to
any goods or services encompassed by the application or
registration.”). It made no findings regarding the other
services listed in the application.
The Board legally erred by permitting Apple to claim
absolute priority for all of the services listed in its applica-
tion 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. Cf. Van Dyne-Crotty, 926 F.2d at
1160 (“[I]t would be clearly contrary to well-established
principles of trademark law to sanction the tacking of a
mark with a narrow commercial impression onto one with
a broader commercial impression.”). A trademark owner
must show tacking is available for each good or service for
which it claims priority on that ground.
In holding otherwise, the Board conflated the tacking
standard with the standard for oppositions under 15 U.S.C.
§ 1052(d). See Board Decision, 2021 WL 1575580, at *8
(“Neither Opposer nor Applicant need prove, and we need
not find, priority as to each service listed in the respective
recitations of services.”). An opposer can block a trademark
application in full by proving priority of use and likelihood
of confusion for any of the services listed in the trademark
application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
Inc., 648 F.2d 1335, 1336 (CCPA 1981) (affirming Board
decision sustaining opposition where opposer showed the
applicant’s use of the mark on T-shirts would likely cause
confusion with opposer’s mark, where the registration in-
cluded T-shirts, dresses, skirts, coats, scarves, etc.); 3
McCarthy on Trademarks and Unfair Competition § 20:17
(5th ed.). The reverse is not true. 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.
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BERTINI v. APPLE INC. 9
To sustain his opposition, Bertini therefore only needs
to show he has priority of use of APPLE JAZZ for any ser-
vice listed in Apple’s application. Bertini’s use of APPLE
JAZZ overlaps with two of the services in Apple’s applica-
tion: production and distribution of sound recordings; and
arranging, organizing, conducting, and presenting live mu-
sical performances. The Board improperly focused only on
Apple’s ability to tack its use of APPLE MUSIC for produc-
tion and distribution of sound recordings and did not con-
sider 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 perfor-
mances. Nor does it give Apple a 1968 priority date for the
laundry list of other services in its application. 2
The Board found, and Apple does not dispute, that Ber-
tini may claim priority of use of APPLE JAZZ in connection
with “[a]rranging, organizing, conducting, and presenting
concerts [and] live musical performances” as early as June
13, 1985. Board Decision, 2021 WL 1575580, at *12. To
defeat Bertini’s showing of priority, Apple must at mini-
mum show it is entitled to tack its use of APPLE MUSIC
2 There is a question as to whether Apple—to suc-
cessfully 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 tack-
ing just to the services overlapping with Bertini’s use of
APPLE JAZZ is sufficient. We need not decide that ques-
tion because, here, it is enough to conclude that Apple, as
explained infra, is unable to tack back for live musical per-
formances.
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10 BERTINI v. APPLE INC.
for live musical performances 3 onto Apple Corps’ use of
APPLE for gramophone records.
This raises a question regarding the scope of the tack-
ing inquiry. Trademark rights arise from the use of the
mark in connection with particular goods or services. See
B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
142 (2015); United Drug Co. v. Theodore Rectanus Co., 248
U.S. 90, 97–98 (1918). We therefore cannot evaluate
whether two marks create the same commercial impres-
sion without considering the goods or services on which the
marks are used. Our 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.
The Board has held tacking requires the new and old
goods or services be “substantially identical.” See Big Blue
Prods. Inc. v. Int’l Bus. Machs. Corp., 1991 WL 326549, at
*3 (T.T.A.B. Apr. 8, 1991); see also C.P. Ints., Inc. v. Cal.
Pools, Inc., 238 F.3d 690, 700–01 (5th Cir. 2001) (noting
“substantially identical” goods or services is the “dominant
terminology” for tacking). Both parties urge us to apply
this standard. We agree the goods or services must be sub-
stantially identical for tacking to apply. This standard
3 In determining tacking in an opposition, we look to
the full scope of goods and services described in the appli-
cation, rather than the goods and services actually used by
the applicant. Stone Lion Cap. Partners, L.P. v. Lion Cap.
LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014) (“It was proper
. . . for the Board to focus on the application and registra-
tions rather than on real-world conditions, because ‘the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set forth
in the application.’” (quoting Octocom Sys., Inc. v. Houston
Comput. Servs., Inc., 918 F.2d 937, 942 (Fed Cir. 1990))).
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BERTINI v. APPLE INC. 11
does not require complete identity of the goods or services.
Such a rule would fail to account for technological innova-
tion which impacts how products evolve over time. For ex-
ample, 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. See Marlyn Nutraceuti-
cals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 878
(9th Cir. 2009) (“Trademark owners are permitted to make
small changes to their products without abandoning their
marks.”); 3 McCarthy on Trademarks and Unfair Competi-
tion § 17:24 (5th ed.) (“[N]ormal product changes do not dis-
turb the priority of a trademark owner.”). To do so would
discourage brand innovation.
Goods and services are substantially identical for pur-
poses of tacking where the new goods or services are within
the normal evolution of the previous line of goods or ser-
vices. This inquiry depends, at least in part, on whether
consumers would generally expect the new goods or ser-
vices to emanate from the same source as the previous
goods or services. See J. Wiss & Sons Co. v. W. E. Bassett
Co., 462 F.2d 567, 569–70 (CCPA 1972) (determining
trademark applicant could not tack its use of TRIMLINE
for hair cutting shears onto its prior use of QUICK-TRIM
for grass shears because hair cutting shears are not in the
normal expansion from grass shears); see also 4 McCarthy
on Trademarks and Unfair Competition § 24:21 (5th ed.)
(“When the issue is not enjoining an intervening user, but
priority and registration rights of one of the parties to an
inter partes proceeding, the issue is whether customers are
likely to link a mark in its expansion market with the orig-
inal, senior usage.”).
To establish tacking, Apple must therefore show live
musical performances are substantially identical to
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12 BERTINI v. APPLE INC.
gramophone records. There is no need to vacate and re-
mand for the Board to make a finding on this issue in the
first instance. No reasonable person could conclude, based
on the record before us, that gramophone records and live
musical performances are substantially identical. Nothing
in the record supports a finding that consumers would
think Apple’s live musical performances are within the nor-
mal product evolution of Apple Corps’ gramophone records.
Accordingly, Apple is not entitled to tack its use of
APPLE MUSIC for live musical performances onto Apple
Corps’ 1968 use of APPLE for gramophone records. Be-
cause Apple began using the mark APPLE MUSIC in 2015,
Bertini has priority of use for APPLE JAZZ as to live mu-
sical performances. We therefore reverse the Board’s dis-
missal of Bertini’s opposition to Apple’s application to
register APPLE MUSIC. 4
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the reasons given above,
we reverse the Board’s dismissal of Bertini’s opposition.
REVERSED
COSTS
Costs awarded to Bertini.
4 We do not and need not consider whether the pro-
priety of tacking here, an inquiry that considers the
“origin-indicating significance” of marks, Am. Sec. Bank,
571 F.2d at 567, is affected by the fact that Apple (the com-
puter company) is not the same company as Apple Corps
(the Beatles’ record label).