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Jazz Musician Wins Trademark Battle Against Apple

Jazz Musician Wins Trademark Battle Against Apple Music

Lesetja Malope

Lesetja Malope

15 August 20234 min read

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Jazz Musician Wins Trademark Battle Against Apple

In a world driven by innovation and creativity, one cannot overstate the significance of safeguarding one's intellectual property. The recent legal triumph of renowned jazz musician Charles Bertini against tech giant Apple Inc. in a trademark battle sheds light on the critical importance of protecting intellectual property (IP) rights. 

Jazz musician Charles Bertini won a trademark battle against tech giant Apple Inc. over the "Apple Jazz" trademark. Bertini has had priority use since 1985. Apple was using it without permission.

The United States Court of Appeals for the Federal Circuit recently overturned the Trademark Trial and Appeal Board's (TTAB) earlier judgment. The TTAB ruled that Apple Music could "tack on" its acquired 1968 trademark used for gramophones and apply it for live performances.

Understanding trademark tacking

Trademark tacking is a legal concept that allows a trademark owner to make alterations to their mark without losing its priority status. Tacking is allowed as long as the old and new marks create the same continuing commercial impression.

The case in question

The genesis of the matter started when Apple launched its streaming service in 2015. Apple then filed for federal trademark protection for its Apple Music trademark. The protection was for:

  • producing and distributing sound recordings
  • arranging and organizing
  • conducting and presenting live musical performances

The trademark would cover several categories of music and entertainment services. 
At the time, Bertini opposed the application. Bertini argued it would cause confusion with his own Apple Jazz trademark. Although his mark had no legal registration, he had used it since 1985 while performing at live concerts and festivals.

The TTAB ruled in Apple's favor, but Bertini appealed to the federal circuit in 2021

The TTAB had found that Apple Jazz was distinct enough and had a priority date of June 13, 1985, for arranging, organizing, conducting, and presenting concerts and live musical performances.

Both parties agreed with the TTAB and further that there may be a likelihood of confusion between the two.

However, Apple Music argued for the right to tack on its Apple Corps' 1968 use of the Apple mark. Apple claimed that the gramophone records and other recording formats had previously used the mark. The argument was that Apple was the senior priority user because of the earlier date.

The federal circuit's ruling

According to the Federal Circuit, Apple needed to demonstrate that live musical performances fundamentally resembled phonograph records and their natural evolution in order to prove tacking.

"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," the judgment reads.

Bertini proves "Apple Jazz" priority of use

The Federal Circuit stated that Apple needed to establish tacking by showing that live musical performances are substantially identical to and a natural evolution of gramophone records.

"Nothing in the record supports a finding that consumers would think Apple's live musical performances are within the normal product evolution of Apple Corps' gramophone records."

The court also stated that sanctioning the tacking of narrow commercial impressions onto one with a broader commercial impression would be against the well-established principles of trademark law.

An opposer of a trademark application must prove the priority of use and likelihood of confusion for any of the services listed to succeed in his opposition.

However, the reverse is optional for the applicant to succeed.

"The trademark applicant cannot establish absolute priority by simply proving priority of use of a single service listed in the application."

Therefore, Bertini only needed to prove the priority of use for any of his Apple Jazz for any of the services Apple applied for.

The court found that Apple Jazz overlapped with two of the services in Apple's application.

Significance of legally protecting one's intellectual property

The successful defense of his "Apple Jazz" trademark by jazz musician Charles Bertini against Apple Inc. demonstrates the significance of legally protecting one's intellectual property. The Federal Circuit's ruling settles the limitations of trademark tacking. The ruling also reaffirms the importance of establishing priority of use for specific services. 

This case is a powerful reminder for individuals, artists, and businesses alike about the importance of IP to preserve and defend invaluable creations. 


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