Andrew Orr
A court has rejected Apple's attempt to register the Apple Music trademark to its "Apple Corps" brand it acquired from The Beatles, favoring an independent artist.
The company argued that it had priority over musician Charlie Bertini's "Apple Jazz" trademark rights, that had been in use since 1985. Apple owns an earlier trademark from the Beatles' music label Apple Corps Ltd.
Apple applied for a federal trademark for "Apple Music" when it launched the streaming service in 2015. Bertini had opposed the application, saying it would lead to confusion with his Apple Jazz trademark, according to Reuters.
Both sides agreed that consumers would be confused by Apple's trademark. However, in 2021, a tribunal at the US Trademark Office ruled in favor of Apple, concluding that it had earlier rights to the term based on a 1968 "Apple" trademark for sound recordings that it had acquired from Apple Corps in 2007.
But in a recent hearing, the Federal Circuit panel unanimously reversed the decision. It said Apple couldn't "tack" its trademark rights for live performances to the Apple Corps trademark for sound recordings because that is a different category.
"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.
Bertini's attorney, his brother James Bertini, said it was a long, difficult struggle, and they were happy with the decision. "Perhaps this decision will also help other small companies to protect their trademark rights."
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Amber Neely
16 Comments
This is a good judgement. Just because Apple is called Apple doesn’t give them rights to every use of the word. In this case Apple has no product called Apple Jazz and Bertini is not trying to act like he is affiliated with Apple. If there is confusion, well that’s the way it is. For that matter there is a Jazz Apple, the fruit, that is patented and the name trademarked. Apple couldn’t go after them either.
I would think that Apple Corps would have needed to sue him starting in the 80s for a claim to be valid.
Apple's lawyers should've been able to swat this problem away without trouble.
https://www.applejazz.com/about.htm
"AppleJazz Records began as a way for Charlie Bertini to promote the recordings of his "AppleJazz Band".
So AppleJazz Records promotes the sale of recordings, not so much live concerts.
His registered trademark is "Apple Jazz" (with a space), not "AppleJazz" (no space). He's not even using the registered trademark. If he stuck to using AppleJazz (no space), I don't see any confusion. His application even has the disclaimer "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "JAZZ" APART FROM THE MARK AS SHOWN." Well, what about the right to use APPLE? In my opinion, he doesn't mention APPLE, because his intent is not to obtain a trademark he wishes to use but only to interfere with Apple Inc. and obtain a lucrative settlement with the company.
It was only in 2016 that Bertini finally applied for the "Apple Jazz" trademark (which he doesn't use), a year after Apple applied for theirs.
Archive.org has old webpages from applejazz.com going back to 2004. Even then, Bertini was using AppleJazz (no space).