Apple leans on The Beatles to win TM case
Apple has won a case brought before the US trademark trial and appeal board (TTAB), which sought to block the company from registering the ‘Apple Music’ trademark.
The opposition was brought by jazz musician Charles Bertini, who argued his ‘Apple Jazz’ common law mark took precedence over the ‘Apple Music’ trademark for the similar goods and services it covered.
Apple’s main defence stemmed from its ‘tacking on’ of The Beatles’ music distribution rights under the ‘Apple Corps’ marks, which it had purchased in 2007. Due to Apple’s ownership of these marks, it could trace its ownership of the first use of ‘Apple’ in relation to music production and distribution back to August 1968.
Following the company’s purchase of the ‘Apple Corps’ marks, Apple secured priority over Bertini, leading the board to dismiss his opposition.
Key examples of the ‘Apple’ mark usage were demonstrated by vinyl record sleeves of John Lennon’s single “Imagine” and The Beatles’ studio album “Let it Be”, both of which prominently feature the Apple mark.
The board clarified: “The opposer’s earliest date of use of his ‘Apple Jazz’ mark is June 13, 1985. Applicant, by tacking the use of the mark ‘Apple’ by Apple Corps, has established use of the mark ‘Apple Music’ for the ‘production and distribution of sound recordings’ as early as August 1968.
“In view of the applicant's earlier priority date, the opposer has not established the necessary element of priority required to prevail.”
Priority defence
Apple had filed for the Apple Music standard character mark to cover “Arranging, organising, conducting, and presenting concerts, live musical performances, entertainment special events in the nature of musical and cultural events…”
Bertini, claimed that the ‘Apple jazz’ mark covered “the same as or substantially identical to services intended to be offered by Applicant under its alleged mark of ‘Apple Music’.”
Bertini pleaded ownership of a pending application for the mark ‘Apple Jazz’.
Apple denied the opposition, citing a defence of priority and ownership of three other ‘Apple’ marks related to the ‘Apple Music’ mark, claiming the Bertini’s mark was “comprised of a descriptive term and a geographically descriptive term, and the claimed mark lacked distinctiveness as of Apple’s priority date.”
Apple Corps’ chief executive officer, Jeffrey Vaughan Jones, testified that “since 1968, Apple Corps has continuously used the ‘Apple’ word mark in connection with the production and/or distribution of sound recordings and film in the United States”.
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