Establishing Priority Through Tacking For One Listed Good or Service Will Not Establish Priority For All Goods and Services in a Trademark Application

In a precedential decision, the Federal Circuit contemplated whether a trademark applicant can establish priority for every good and service in its application by showing priority through tacking for only one of those listed goods or services.1 The Court answered that question with a resounding “no.”

Apple Inc. (“Apple”) sought trademark registration over its APPLE MUSIC mark under Application Serial No. 86/659,444 covering several services in International Class 41, including, “production and distribution of sound recordings” and “arranging, organizing, conducting, and presenting live musical performances.”2 Charles Bertini (“Bertini”) opposed Apple’s application on the grounds that it was likely to cause confusion with Bertini’s common law trademark APPLE JAZZ.3

The key issue in Bertini’s opposition was whether he could demonstrate priority, basically that he used his APPLE JAZZ mark first, giving him a right to prevent Apple from registering a confusingly similar trademark. It is undisputed by the parties that Bertini began using the APPLE JAZZ mark on June 13, 1985 in connection with festivals and concerts.4 Conversely, Apple began using the mark APPLE MUSIC on June 8, 2015 with the launch of its music streaming service.5 Thus, at first blush Bertini appears to have clear priority, that is where Apple’s tacking arguments come into play.

The Trademark Trial and Appeal Board (“Board”) dismissed Bertini’s opposition holding that Apple was entitled to tack its 2015 use of APPLE MUSIC for “production and distribution of sound recordings” onto the August 1968 use of APPLE, a registration purchased by Apple that was previously owned by Apple Corps, the Beatles’ record company, under Registration No. 2,034,964 in connection with “gramophone records featuring music” and “audio compact discs featuring music.”6 Thus, the Board held, since Apple showed entitlement to tack onto the 1968 first use date for APPLE for the one listed service, Apple could utilize the 1968 date for all the listed services in the application, giving it priority over Bertini’s use of APPLE JAZZ.7

The Federal Circuit disagreed, reversing the Board’s decision holding the Board erred in allowing Apple to claim priority for all the listed services in the application based on a showing of priority over only one of the listed services.8 Notably, the Court held that for tacking to apply, the new and old goods or services must be substantially identical.9 Meaning, the new goods or services must be “within the normal evolution of the previous line of goods or services” such that “consumers would generally expect the new goods or services to emanate from the same source.”10

Here, the Court held, no reasonable person could conclude that gramophone records, as covered by the APPLE registration, are substantially identical to live musical performances, as claimed under the APPLE MUSIC application.11 As such, Apple could not establish a first use date of APPLE MUSIC that pre-dated Bertini’s use of the APPLE JAZZ mark for live musical performances.12 Accordingly, the Court reversed the Board’s dismissal of Bertini’s opposition and with that, have set the boundaries for future trademark owners hoping to tack rights onto earlier registrations.

Tacking was already a strictly applied doctrine that traditionally allowed trademark owners to keep the date of their first use of a trademark for priority purposes when slight modifications are made to the mark, as long as the new and old marks are similar enough that they create the same commercial impression.13 In other words, consumers would consider both the new and old marks to be the same mark emanating from the same source.14 Trademark owners may choose to make such slight modifications to their trademark in response to consumer preference, evolving aesthetics, or new advertising and marketing styles. Without tacking, a trademark owner would either be forced to never change its trademark, or risk losing its priority every time it does.

What is so unique in this case, is the new question posed to the Court. Could a trademark owner establish priority for every good or service in its application by merely establishing priority through tacking for only one of the listed goods or services? The holding in this case confirms that a trademark owner seeking to establish priority through tacking, must be able to show it is entitled to such for each and every listed good or service in the application.

While it may seem obvious in this case that gramophone records are not substantially identical to live musical performances, it will be interesting to see how this case plays out in practice. Particularly, in fields where technological advances have and continue to development at a fast pace. It begs the question, where is the line for “normal evolution” and could it get pushed too far that consumers would no longer recognize the new advancement as emanating from the same source? In light of this new decision, trademark owners in such fields may consider utilizing the USPTO’s technology evolution pilot program to avoid such a dilemma.15 This pilot program was launched to allow trademark owners to seek amendment to the description of goods and services in registrations if they are providing the same fundamental goods and services through an updated means, method, or format.16

1 Bertini v. Apple Inc., 63 F.4th 1373 (Fed. Cir. 2023).
2 Id. at 1376.
3 Id.
4 Id.
5 Id.
6 Id.
7 Id.
8 Id. at 1377.
9 Id. at 1381.
10 Id.
11 Id.
12 Id.
13 Id. at 1377 (citing Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 422 (2015)).
14 Id. at 1378.
15 See,What%20is%20the%20technology%20evolution%20pilot%20program%3F,means%2C%20method%2C%20or%20format, last visited April 24, 2023.
16 Id.