Jazz musician Charles Bertini has won a trademark battle against tech giant Apple Inc. for a trademark he has been using since 1985, which Apple in turn has been using without permission.
Apple Inc (AAPL.O) has lost its application for a federal trademark registration for “Apple Music” after the US Court of Appeals ruled against a jazz musician who challenged the tech giant’s application.
The US Court of Appeals for the Federal Circuit has rejected the argument that Apple has priority over the rights to musician Charlie Bertini’s trademark “Apple Jazz” based on the ownership of an earlier trademark from Beatles’ music label Apple Corps Ltd.
The court allowed Bertini to block Apple’s federal trademark application for Apple Music, covering live performances and several other trademark areas (classes) that Apple sought to enforce.
Bertini’s lawyer, who is his brother, James Bertini, said that “they are pleased with the decision after a ‘long and hard fight.
“Perhaps this decision will also help other small companies to protect their trademark rights,” the lawyer said.
Apple representatives did not immediately respond to a request for comment.
Apple launched its streaming service in 2015 and applied for the federal trademark “Apple Music” the same year, covering several categories (classes) of music and entertainment services. Bertini opposed the application, arguing that the name would cause confusion with the “Apple Jazz” brand, which Bertini had been using since 1985 to advertise concerts.
Both sides agreed that the Apple mark was likely to confuse consumers. But a U.S. Trademark Office tribunal ruled in Apple’s favor in 2021, finding that Apple had a prior use right to the name based on the 1968 Apple trademark for sound recordings acquired from Apple Corps in 2007.
The Federal Circuit unanimously reversed the decision in favor of Bertini. The company said that Apple could not “overstep” its trademark rights to live performances with the Apple Corps trademark for sound recordings, another category of goods.
“The assignment of a mark for one product or service does not give priority to every other product or service in a trademark application,” the court emphasized.
This is not the first trademark dispute involving Apple and another company using the Apple name in the music space. Back in the 2000s, there was a high-profile conflict between the technology company Apple and Apple Corps, a company founded by The Beatles in 1968.
Apple Corps v. Apple Computer
In the period from 1978 to 2006, a number of legal disputes arose between Apple Corps (owned by The Beatles) and computer manufacturer Apple Computer (now Apple Inc.) over competing trademark rights. On May 8, 2006, the 
Supreme Court of England ruled in favor of Apple Computer. The companies reached a final settlement, which was announced on February 5, 2007.
Under the terms of the agreement, Apple Inc. will own all trademarks associated with the name and license certain trademarks to Apple Corps for further use. Apple Inc. will continue to use the Apple name and logo on iTunes. Although the terms of the deal were confidential, some records were published in the media and it was estimated that Apple bought the trademark rights of Apple Corps for $500 million.
The settlement ended a long and costly legal battle between the two companies and paved the way for the release of The Beatles’ music on iTunes, which was a major event for Apple Inc.
The importance of trademark protection
Protecting your trademark rights is very important for a number of reasons. It helps to ensure that consumers can identify and distinguish your products and services from other companies, prevent lost sales, and protect your brand investment.
- Trademarks help consumers identify the goods and services of different companies. When consumers see a familiar brand, they know what to expect in terms of quality, price, and other factors. This helps consumers make informed choices about the goods and services they buy.
- Trademarks protect businesses from unfair competition. When a business invests in the development of a brand, it receives the exclusive right to use that brand. Trademarks help businesses protect their brands from being copied by competitors.
- Trademarks encourage businesses to create new products and services. When businesses know they can protect their brands, they are more likely to invest in developing new products and services. This is because they know they can recoup their investment and make a profit.
- Trademarks create jobs and stimulate the economy. When businesses create new products and services, they need to hire more workers. This creates jobs and stimulates the economy.
Thus, trademarks are essential for a fair and competitive market. Protecting trademark rights helps ensure that consumers have access to the information they need to make informed decisions and that businesses have the right incentives to innovate and grow. If you believe that your trademark rights have been infringed, you should contact our law firm, and we, in turn, will do everything we can to protect or restore the rights that have already been violated.
Apple / Charles Bertini / copyright / intellectual property / trademark
