Apple Music trademark blocked over branding conflict with musician
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.
Court rejects Apple
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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Court rejects Apple
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."
Read on AppleInsider
Comments
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).
If it’s true that Bertini applied after Apple applied then I don’t see why he should get any preference, especially when it appears he is the one bringing the suit.
In my opinion, the federal judges erred in this case: they seem confused and imagine that Apple’s trademark only covers live performance, but it does not. Apple’s trademark for “Apple Music” covers it all: recordings, performances, radio, everything. What the Bertini’s are arguing is the public will be confused by “Apple Music” because he has a trademark on “Apple Jazz” with a space, which is not even the name of his band or its recordings (his band is called AppleJazz, no space). It’s a BS argument, since Apple Music has been in operation for years, as has AppleJazz, and nobody has been confused by this.
Here are some trademarks that I believe were lost because the respective owners did NOT sue trademark infringers:
The confusion is whether consumers will confuse "Apple Music" as being related to Apple Jazz (or vice versa) because both have the word "Apple". But the real argument should be whether "Apple Jazz" have the right to use the term "Apple" in their trademark. "Apple" is not a generic term in the music business. Apple Corps. owns the trademark for "Apple", in the music business with their "Apple Records" label. And Apple Inc. bought out Apple Corps. Now "AppleJazz" he can trademark, as the word "AppleJazz" is not generic to the music business and I believe it's the name of his band. But that shouldn't give him automatic trademark to the term "Apple Jazz". The judge argument seems to be that "Apple Jazz" is not in the same business category as "Apple Records" and "Apple, Inc." and therefore "Apple Jazz" is not infringing upon Apple Corps "Apple Records" label trademark.
All Apple Inc. has to do is to use their "Apple logo" in with "Music" ( Music) and not use the term "Apple". Therefore, it eliminate the confusion as the Apple logo clearly indicate that it's related to Apple Inc. and not "Apple Jazz".
It's not so much that the company lost their trademark but that consumers are using their trademark as a generic term for the product. This dilutes the trademark branding. Clorox is a trademark name for the Clorox Company bleach but consumers will say i need a gallon of Clorox to mean any companies bleach. Same as using "Kleenex" for any brand of tissue or "Walkman" for any brand of portable cassette player or "iPod" for any brand of MP3 player or "Scotch Tape" for any brand of cellophane tape and "Saran Wrap" for any brand of plastic wrap. And the grand daddy of them all, "Coke" for any brand of cola.
Maybe you're too young to remember that "Apple" in the music business, nearly always remind consumers of The Beatles since they created their own "Apple Record" music label in 1968. Jobs even admitted to naming his computer company "Apple Computer" because he was a big fan of The Beatles. Apple Corps only agreed to allow the use of "Apple Computer" (along with the apple logo) if Apple Computer stayed out of the music business. Which of course they didn't and they ended up buying out Apple Corps to end the trademark lawsuits.
If this guy thinks that the "Apple" in his "Apple Jazz" trademark is not confusing consumers with the Beatles "Apple Records"music label, he's lying.