Apple Music trademark blocked over branding conflict with musician

Posted:
in General Discussion
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
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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Comments

  • Reply 1 of 16
    DAalsethDAalseth Posts: 2,830member
    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.
    OferAniMillgrandact73baconstangdarkvader
  • Reply 2 of 16
    I would think that Apple Corps would have needed to sue him starting in the 80s for a claim to be valid.
    Oferdarkvader
  • Reply 3 of 16
    cpsrocpsro Posts: 3,210member
    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).
    edited April 2023 mknelsonronnqwerty52badmonkradarthekat
  • Reply 4 of 16
    igorskyigorsky Posts: 759member
    DAalseth said:
    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.
    Yeah it's a good judgement if you support copyright squatters.
    edited April 2023 ronn
  • Reply 5 of 16
    DAalsethDAalseth Posts: 2,830member
    igorsky said:
    DAalseth said:
    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.
    Yeah it's a good judgement if you support copyright squatters.
    Apple Jazz is not Apple Music or Apple Classical. Apple had no justification in going after him. They just want to claim anything with Apple in the name which is an unjustifiable overreach. He has had a group called AppleJazz since the 1980s. Apple was utterly, completely, and totally in the wrong here and I am comfortable in calling them out for their abusive behaviour on this one. 
    muthuk_vanalingambeowulfschmidtgatorguygrandact73sphericdarkvader
  • Reply 6 of 16
    DAalseth said:
    igorsky said:
    DAalseth said:
    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.
    Yeah it's a good judgement if you support copyright squatters.
    Apple Jazz is not Apple Music or Apple Classical. Apple had no justification in going after him. They just want to claim anything with Apple in the name which is an unjustifiable overreach. He has had a group called AppleJazz since the 1980s. Apple was utterly, completely, and totally in the wrong here and I am comfortable in calling them out for their abusive behaviour on this one. 
    To me it reads that Bertini is going after Apple, not the other way around.


    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.
    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.
    ronn
  • Reply 7 of 16
    chadbagchadbag Posts: 2,007member
    DAalseth said:
    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 don’t disagree but Apple didn’t “go after” this Apple Jazz guy.  He we t after Apple in that he opposed Apple’s application 


    edited April 2023
  • Reply 8 of 16
    chasmchasm Posts: 3,374member
    igorsky said:
    DAalseth said:
    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.
    Yeah it's a good judgement if you support copyright squatters.
    DAalseth of course didn’t actually read the article and doesn’t understand the case; pay them no mind.

    That said, Bertini is not “squatting” on the copyright for AppleJazz/Apple Jazz. He applied for a trademark for “Apple Jazz” before Apple applied for the trademark for “Apple Music.” He has had a band called AppleJazz since, apparently, 1985.

    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.

    Conclusion: the Bertinis are holding out for a big payoff. They’ll likely get it.


    ronnradarthekatspheric
  • Reply 9 of 16
    Confusion?  Who even ever heard of this guy until today.  That’s the whole point of the suit. Now he has name recognition. I guess he wins.  But how can Apple Music Infringe on Apple Jazz?  They are two totally different names so not sure why they each can’t have a trade mark
  • Reply 10 of 16
    radarthekatradarthekat Posts: 3,866moderator
    Tim, do it, come out with a streaming service, aLa Apple Classic, for the Jazz genre. 

    Call it Mac Jazz!  
    ronn
  • Reply 11 of 16
    22july201322july2013 Posts: 3,612member
    If you don't actively go after trademark infringers, you can lose your trademark. So to paraphrase an old expression,
    "Sue it or lose it."

    Here are some trademarks that I believe were lost because the respective owners did NOT sue trademark infringers:

    • Kerosene
    • Trampoline
    • Aspirin
    • Zipper
    • Bubble Wrap
    • App Store
    baconstang
  • Reply 12 of 16
    davidwdavidw Posts: 2,074member
    designr said:
    BirderGuy said:
    Confusion?  Who even ever heard of this guy until today.  That’s the whole point of the suit. Now he has name recognition. I guess he wins.  But how can Apple Music Infringe on Apple Jazz?  They are two totally different names so not sure why they each can’t have a trade mark
    Jazz is a kind/form/genre of Music. This isn't a ridiculous stretch for him.

    That argument don't hold water. Both "Jazz" and "Music" are generic terms in the music business. Anyone in the music business can use words that are generic in their business, in their trademarks. That's like saying "Apple Jazz" is infringing upon the trademark of "Modern Jazz Quartet because both they using the word "Jazz". Or that "Apple Jazz" is infringing upon "Sony Music" trademark because "jazz" is a form of music.

    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".    
  • Reply 13 of 16
    davidwdavidw Posts: 2,074member

    If you don't actively go after trademark infringers, you can lose your trademark. So to paraphrase an old expression,
    "Sue it or lose it."

    Here are some trademarks that I believe were lost because the respective owners did NOT sue trademark infringers:

    • Kerosene
    • Trampoline
    • Aspirin
    • Zipper
    • Bubble Wrap
    • App Store
    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.  
    edited April 2023 ronn
  • Reply 14 of 16
    davidwdavidw Posts: 2,074member
    designr said:
    davidw said:
    designr said:
    BirderGuy said:
    Confusion?  Who even ever heard of this guy until today.  That’s the whole point of the suit. Now he has name recognition. I guess he wins.  But how can Apple Music Infringe on Apple Jazz?  They are two totally different names so not sure why they each can’t have a trade mark
    Jazz is a kind/form/genre of Music. This isn't a ridiculous stretch for him.

    That argument don't hold water.   
    And yet...it seems to have been enough for the judge.

    The point I was making is the argument made by the owner of "Apple Jazz" against Apple for "Apple Music" isn't an unreasonable confusion argument which the poster I replied to seems to think.

    Music is a generic term. Yes.
    Jazz is a generic term used within the music world. Yes.

    Apple is a specific trademark/brand in certain fields. Yes.

    The combination of "Apple" and "Music" does make it unique as compared to something like "Sony Music" (to use your example).

    And the combination of "Apple" and "Jazz" also creates a unique brand.

    The question was whether "Apple Music" might create confusion as it relates to "Apple Jazz". It seems reasonable to me (and apparently the judge in this case and even both parties to the suit/complaint: "Both sides agreed that consumers would be confused by Apple's trademark.") that, yes, there could be confusion. Probably because jazz is a kind of music. In other words, in some people's minds, "Apple Jazz" might be (albeit incorrectly) thought to be a version or subset of "Apple Music."

    You are likely correct that Apple may get around this by only referring to "Apple Music" in the "Music" form. However, I'll be curious about that too. Because how do you say/pronounce/speak "Music"? Does that bring the problem back full circle? Possibly.

    In the end, Apple may end up doing with this guy what they did with Apple Corps.: Come to some agreement that locks up "Apple Jazz" for Apple, Inc. and then, possibly, licensing it back to this guy for some nominal amount. Just so Apple, Inc. can control it.
    But you're forgetting that "Apple" was already a well known brand in the music business, before this guy trademarked "Apple Jazz". How did he get around not confusing the consumers with the name "Apple" in "Apple Jazz". Even if "Apple" is not generic to he music business, "Apple" is a well know name in the music business.  If Apple Computer had trouble trademarking their "Apple" name and logo in the computer business in 1976, how did this guy get a trademark for "Apple Jazz" for a business in the music business?  

    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.  
    ronn
  • Reply 15 of 16
    ronnronn Posts: 669member
    It may be a long shot, but Apple should push for a full panel review. Yes, the 3 judge panel ruled 3-0 against them, but this seems contrary to previous rulings. Especially since Apple bought out Apple Corps along with all its trademarks and they applied for the trademark earlier than Bertini. Maybe a majority will rule like the Trademark Office tribunal did earlier.
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