In a recent case before the United States Court of Appeals for the Federal Circuit, the court reversed the tribunal which it dismissed a case that sought to challenge Apple’s use of the mark “Apple Music” as applied to live musical events. Apple previously purchased a trademark that had originally been owned by the Beatles which had been used to cover certain products including live events. In using this mark, Apple attempted to “tack” its date back to 1968. The Federal Circuit found that while tacking was proper sofar as it applied to the one service listed in its application, it was improper to in turn, grant priority to every good or service listed in its application. In short, the Federal Circuit found that Apple should not be granted absolute priority for all the services that it applied for, based off of having priority in one good or service in its trademark application.
What is “Tacking” in the Trademark Context?
The 2008 Northern District of Illinois decision Miyano Machinery USA, Inc. v. MiyanoHitec Machinery, Inc., provides an instructive synopsis of the “tacking doctrine.” Althogh not relied on by the Federal Circuit, it provides a helpful background for the layperson who is not as familiar with trademarks, as the Federal Circuit is.
Under the “tacking” doctrine, “minor changes in a mark which do not change the overall commercial impression created on buyers” do not lead to abandonment of the prior, similar mark. As long as the key elements of the mark remain, it has not been abandoned.
Miyano Machinery USA, Inc. v. MiyanoHitec Machinery, Inc, 576 F.Supp.2d 868, 882 (N. Dist. Ill. 2008) (Internal citations omitted)
The case, Bertini v. Apple, Inc., involved a dispute over the use of the term “Apple Jazz” in connection with various goods and services. The appellant, Bertini, claimed to have used the term since 1985 in connection with live musical performances, while the defendant, Apple, sought to register the trademark “Apple Music” for a broad range of goods and services, including production and distribution of sound recordings, presenting live musical performances, and providing websites featuring entertainment and sports information.
Apple argued that it was entitled to claim priority for all of the services listed in its application by tacking onto Apple Corps’ 1968 use of “Apple” for gramophone records. The Trademark Trial and Appeal Board agreed with Apple, but the Federal Circuit disagreed, holding that tacking a mark for one good or service does not grant priority for every other good or service in the trademark application. Rather, a trademark owner must show that tacking is available for each good or service for which it claims priority on that ground.
In finding for Bertini, the Court found that a person opposing the trademark can block an application if it can prove priority of use and likelihood of confusion for any of the services outlined in the trademark application. To prevail, Bertini only had to demonstrate that he had priority of the term “Apple Jazz” over any singular portion of the application, because “Apple Jazz” overlaps with two services in the application, (1.) production and distribution of sound recordings; and (2.) arranging, organizing, conducting and presenting live music performances; the entire application can be shot down. Even though Apple has priority (beginning in 1968) for gramophone records, this does not apply to other services.
One of the questions in front of the court was whether Apple must establish that the full scope of goods and services listed be entitled to tacking, or whether just the overlapping goods and services need to be demonstrated; the Court did not decide this question because Apple is unable to tack the overlapping live musical performances.
As to the other question, the Court held that Apple cannot tack its use of “Apple Music” for live musical performances onto the 1968 “Apple” phrase as applied to gramophone records, given that Apple only began using “Apple Music” in 2015. Therefore, Bertini has priority to use “Apple Jazz” for music performances. The Court reversed the dismissal of Bertini’s opposition to Apple’s trademark application.
The United States Court of Appeals for the Federal Circuit determined that Apple cannot claim absolute priority for all the services listed in its “Apple Music” trademark application based on the tacking doctrine. The court found that tacking a mark for one good or service does not grant priority for every other good or service in the trademark application, and that Apple cannot tack its use of “Apple Music” for live musical performances onto the 1968 “Apple” phrase as applied to gramophone records. As a result, Bertini has priority to use “Apple Jazz” for music performances, and the court reversed the dismissal of Bertini’s opposition to Apple’s trademark application.