The US Court of Appeals for the Federal Circuit rejected
Apple's argument that it had priority over trumpeter Charlie Bertini's
"Apple Jazz" trademark rights based on its ownership of an earlier
trademark from the Beatles' music label Apple.
The court allowed Bertini to block Apple's bid for a federal
Apple Music trademark covering live performances, one of several trademark uses
Apple sought to secure.
Bertini's attorney, his brother James Bertini, said they
were pleased with the decision after a "long and difficult struggle."
"Perhaps this decision will also help other small
companies to protect their trademark rights," the attorney said.
Representatives for Apple did not immediately respond to a
request for comment.
Apple launched its streaming service in 2015 and applied the
same year for a federal "Apple Music" trademark covering several
categories of music and entertainment services. Bertini opposed the
application, arguing the name would cause confusion with the "Apple
Jazz" branding he had used since 1985 to advertise concerts.
Both sides agreed that Apple's mark would likely confuse
consumers. But a US Trademark Office tribunal ruled for Apple in 2021, finding
it had earlier rights to the name based on a 1968 "Apple" trademark
for sound recordings it purchased from Apple in 2007.
A unanimous Federal Circuit panel reversed the decision to
dismiss Bertini's opposition Tuesday. It said Apple could not "tack"
its trademark rights for live performances to the Apple Corps trademark for
sound recordings, a different category of goods.
"Tacking a mark for one good or service does not grant
priority for every other good or service in the trademark application,"
the court said.
The case is Bertini v. Apple, US Court of Appeals for the
Federal Circuit, No. 21-2301. © Reuters