On April 4, in Bertini v. Apple Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the limitations of tacking and its application in establishing priority in trademark disputes. This case sets an important precedent for tacking use of a mark in the trademark registration context and highlights the limitations of tacking as a strategy for establishing priority.
The dispute centered on Bertini’s opposition to Apple Inc.’s (“Apple”) application to register the trademark APPLE MUSIC for a broad range of services, including production and distribution of sound recordings, presenting live musical performances, and providing websites featuring entertainment and sports information. Bertini had been using the mark APPLE JAZZ for live musical performances since 1985. Apple sought to establish priority over Bertini by tacking its use of APPLE MUSIC onto Apple Corps’ (the Beatles’ record label, from which Apple acquired certain trademark rights in 2007) 1968 use of APPLE for gramophone records.
The Federal Circuit overturned the Trademark Trial and Appeal Board’s (“TTAB”) dismissal of Bertini’s opposition, holding that Apple cannot claim priority for all the services listed in its application by tacking its use of APPLE MUSIC for a single good or service. Apple argued that its application should be granted as to all listed goods or services if it could establish priority through tacking in any one of those goods or services. The court disagreed and stressed, “[a]n 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 . . . . The reverse is not true.” It held that tacking use of a mark for one good or service does not confer priority for every other good or service in the trademark application.
The Federal Circuit noted that the goods and services must be “substantially identical” for tacking to apply, requiring any new goods or services to be within the normal evolution of the previous line of goods or services. Ultimately, the court concluded that no reasonable person could find that gramophone records and live musical performances were substantially identical, and that nothing in the record supported a finding that consumers would believe Apple’s live musical performances are within the normal product evolution of Apple Corps’ gramophone records. Accordingly, it found that Bertini had priority as for live performances. It reversed the TTAB’s dismissal of Bertini’s opposition and awarded costs to Bertini.
This case offers important guidance for trademark owners and practitioners on the complexities of tacking and establishing priority in trademark disputes. Brand owners should carefully consider whether they have priority for all relevant goods and services. Failure to establish priority for a single good or service could prove fatal to the whole application—one bad apple spoils the bunch.
