Apples to Apples: A Jazz Musician’s Trademark Win Against Apple

Apple Inc., the computer behemoth, has suffered a setback in its trademark dispute with Charles Bertini, a jazz musician who began using the trademark “Apple Jazz” in 1985. Apple has a registered trademark for “Apple Music” in multiple categories including production and distribution of sound recordings, but it never obtained a trademark for live musical performances. 

Bertini argued that Apple could only claim priority going back to 2015, when it launched Apple Music. Apple countered that it had settled a trademark dispute with the Beatles’ “Apple Corps” record label in 2007 where Apple purchased the Beatles’ trademarks. Those trademarks go back to 1968. 

The Trademark Trial and Appeal Board (“TTAB”) sided with Apple, finding that Apple was entitled to a date of 1968 because that is how far back the rights for the Beatles’ record label went, which rights Apple now owns. However, on April 4, 2023, the Federal Circuit reversed the TTAB’s decision. It ruled that the TTAB was in error because it allowed Apple to claim priority across all services based on a showing of priority for one service, namely production and distribution of sound recordings.

Judge Moore held that goods and services may be considered identical enough to allow registration in one category up good and services to give you a priority in another category of goods and services, only when the newer version of the service is “within the normal evolution of the previous line of goods or services.” 

The Federal Circuit held that gramophone records and live musical performances are not identical, and one is not necessarily within the normal evolution of the other. Bertini won a major victory against the computer giant, keeping his rights to “Apple Jazz” in the category of live musical performances. 

The case is Bertini v. Apple Inc., case number 21-2301, in the U.S. Court of Appeals for the Federal Circuit.

Judges Kimberly A. Moore, Richard G. Taranto and Raymond T. Chen sat on the panel for the Federal Circuit.

Bertini was represented by James Bertini.

Apple was represented by Adam H. Charnes, William Bryner, Theodore H. Davis, John D. Mayberry, Sara K. Stadler and Joseph E. Petersen of Kilpatrick Townsend & Stockton LLP.

* Lowe & Associates (“The Firm”) is a boutique entertainment and business law firm located in Beverly Hills, California. The firm has extensive experience handling cases involving trademark law, having provided top-quality legal services to its clients since 1991. The Firm is recognized for its many achievements, including successfully litigating many high-profile cases.

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