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IP Alert: Federal Circuit Clarifies Standard for Tacking Doctrine in Trademark Applications

April 21, 2023

On April 4, in Charles Bertini v. Apple Inc., the Federal Circuit held that a trademark applicant cannot establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application.

Apple filed Application No. 86659444 for the mark APPLE MUSIC for Class 41 services, including production and distribution of sound recordings and arranging, organizing, conducting and presenting live musical performances. Bertini, a jazz musician, filed a notice of opposition in the Trademark Trial and Appeal Board (TTAB) against Apple’s application based on a likelihood of confusion with his mark APPLE JAZZ which is used in connection with “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances.”

In addition to owning the APPLE MUSIC application, Apple previously purchased from the Beatle’s Apple Corps. Registration No. 2034964 for the mark APPLE for “gramophone records featuring music” and “audio compact discs featuring music.” During the opposition, Apple argued that, based on its ownership of the APPLE registration, it was entitled to the earlier priority date of August 1968 which preceded Bertini’s date of first use in 1985. The TTAB found that Apple could tack its 2015 use of its applied-for mark APPLE MUSIC onto the August 1968 use of its purchased APPLE registration. Therefore, based on Apple’s priority in the APPLE MUSIC mark, the TTAB dismissed Bertini’s opposition.

On appeal to the Federal Circuit, Bertini argued that the TTAB erred in its decision that Apple’s use of APPLE MUSIC has priority over his use of APPLE JAZZ. More specifically, Bertini claimed that the TTAB only considered whether Apple could tack its use of the APPLE MUSIC mark for one of the several services delineated in the subject application, namely production and distribution of sound recordings.

The court discussed the tacking doctrine which, it noted, allows trademark owners to “modernize and update their trademarks in response to a changing marketplace.” As the standard for tacking is strictly construed, a trademark owner that invokes tacking must demonstrate that the old and new marks are legal equivalents or create the same commercial impression. The court also analyzed the limited reach of tacking in its court, as well as the narrow interpretation of the doctrine in other circuits.

Based on its analysis, the court found that Apple could not invoke the tacking doctrine to claim priority for all of the services listed in its application based on a showing of priority for one service in the application. In particular, the court determined that Apple could not tack its use of APPLE MUSIC for live musical performances onto its use of APPLE for gramophone records. The court also provided further guidance on the proper standard for tacking in connection with different goods or services and determined that an applicant may establish tacking if the goods and services are substantially identical, or “within the normal evolution of the previous line of goods or services.” In this case, the court found that gramophone records and live musical performances are not substantially identical as such performances are not within the normal product evolution of Apple Corps’ gramophone records. Therefore, Apple’s date of priority for its APPLE MUSIC mark was 2015, not 1968, and Bertini thus had priority of use for APPLE JAZZ for live musical performances. Based on its findings, the court reversed the TTAB’s dismissal of Bertini’s opposition.

The Federal Circuit’s decision provides further guidance on the scope of the tacking doctrine in the context of different goods and services. As virtual goods and services become increasingly popular, this case is significant for trademark owners who are seeking to apply for registration of such products or services in the metaverse or virtual realm. It also allows trademark owners to better strategize and enforce their rights against third parties that may erroneously claim priority in different goods or services that are not within the normal product evolution of their prior goods or services.

For more information on this decision, please contact Fitch Even attorney Kerianne A. Strachan, author of this alert.

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