Hafiz Zubir & Co.


On April 4th, 2023, American jazz musician Charlie Bertini won an intellectual property case against tech giant Apple in the US Court of Appeals over the trademark “Apple Jazz”.

In 2015, Apple tried to register “Apple Music”, but Bertini objected to the application because it would cause confusion with his trademark “Apple Jazz” that he had been using since 1985 for live musical performance.

Although Bertini never registered the “Apple Jazz” trademark, he had the right under Common Law to challenge a trademark application under Section 2(d) of the Lanham Act (15 U.S.C.A. § 1052(d)).

The Trademark Trial and Appeal Board (TTAB) initially rejected Bertini’s objection, but the US Court of Appeals found that Bertini had priority use of “Apple Jazz” and overturned the decision.

One of the main issues in this case was whether Apple could rely on the Doctrine of Tacking to use the priority date of the “Apple” trademark acquired as early as August 1968.

The Doctrine of Tacking is a legal principle that allows a trademark owner to modify their trademark over time without losing the priority date, thus giving the owner an advantage and preventing other entities from using the same trademark as long as the old and new trademarks result in the same commercial impression and continuity.

The court, however, ruled that the trademark applicant could not entitle to absolute priority date for all services listed in the application merely because one of the services listed was related to prior use.

The services listed in Apple’s application were “production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances.” The court acknowledged that Apple had been continuously using the “Apple” trademark for producing and distributing gramophone records and other sound recordings since 1968, but not for the service of organising live musical performances.

Bertini hopes this decision will help small companies protect their trademark rights. So far, there have been no developments on whether Apple will appeal this case to the Supreme Court.