How Far Can the Music Go: The Limited Reach of the Trademark Tacking Doctrine

| Jessie YangDaniel Kiang


Before Moore, Taranto and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application.

Apple filed a trademark application for the mark APPLE MUSIC for services including production and distribution of sound recordings and live musical performances. Musician Charlie Bertini opposed Apple’s application based on a likelihood of confusion with Bertini’s common law mark APPLE JAZZ, which Bertini had used in connection with festivals and concerts since 1985 and with distributing sound recordings since the 1990s. Apple began using the mark APPLE MUSIC in 2015 when it launched its music streaming service, but argued that it was entitled to an earlier 1968 priority date based on trademark rights it purchased from Apple Corps (The Beatles’ record label). Apple argued that it should be allowed to “tack” its use of APPLE MUSIC for live musical performance onto Apple Corps’ use of the mark APPLE for gramophone records to obtain an earlier priority date. The Board found that Apple had priority based on Apple Corps’ continuous use since as early as 1968 and dismissed Bertini’s opposition.

On appeal, the Federal Circuit held that tacking a mark for one good or services does not grant priority for every other good or service in the trademark application, and thus the Board erred by permitting Apple to claim absolute priority for all of the services listed in the application based on a showing of priority for only one service. The Federal Circuit also clarified that while the new and old goods or services do not need to be identical for tacking to apply, the new goods or services must be “within the normal evolution of the previous line of goods or services.” The Court noted that while cassettes and compact discs may be deemed as within the limited scope, no consumer would find Apple's live musical performances are within the normal product evolution of gramophone records. Thus, the Federal Circuit reversed the Board’s dismissal of Bertini’s opposition.

Editor: Paul Stewart