“Whereas it’s true that Mr. Bertini filed these cancellation proceedings years in the past, we can’t say that the Board clearly abused its discretion in staying these proceedings pending decision of the opposition proceedings.” – CAFC
The U.S. Court docket of Appeals for the Federal Circuit (CAFC) today denied Charles Bertini’s petition for a writ of mandamus asking the court docket to order the U.S. Patent and Trademark Workplace (USPTO) to resolve his trademark cancellation case in opposition to Apple, Inc.
In keeping with Bertini, the cancellation case has been in limbo on the Trademark Trial and Enchantment Board (TTAB) for greater than three years, “regardless of [the TTAB’s] coverage and frequent public statements by prime USPTO officers that it decides circumstances after trial in roughly ten weeks.” Moreover, a Petition to the USPTO Director filed on Might 4, 2023, has but to be determined, “even though most Petitions to the Director are determined in roughly two months.”
Bertini’s case started in June of 2016, when he filed an opposition in opposition to Apple, Inc.’s Trademark Application No. 86/659,444 for APPLE MUSIC, which the corporate had been utilizing since 2015, when it launched its music streaming service. Bertini registered his mark in New York state in 1991 for leisure companies however began using the mark properly earlier than that, in 1985. Unaware that he didn’t have a federal registration, Bertini filed the opposition together with an utility to register APPLE JAZZ with the USPTO.
Apple argued that it was entitled to a precedence date of August 1968 based mostly on trademark rights it bought from Apple Corps, the Beatles’ document firm, in 2007. Apple Corps’ Registration No. 2034964 covers the mark APPLE for “[g]ramophone data that includes music” and “audio compact discs that includes music” and claims a date of first use of August 1968. The TTAB discovered Apple Corps had constantly used the APPLE mark on gramophone data and different recording codecs since 1968 and that Apple, Inc. was allowed to tack its use of APPLE MUSIC onto the 1968 use of APPLE, thus granting it precedence over Bertini’s mark.
However in April 2023, the CAFC said the TTAB had legally erred in permitting Apple to say absolute precedence for all the companies listed in its utility based mostly on a exhibiting of precedence for one service. The court docket then denied Apple’s request for rehearing in July. In keeping with Bertini, a Suspension Order of February 2022 within the cancellation continuing mentioned the TTAB would resolve the case after the CAFC enchantment was determined.
The mandamus petition was filed in November 2023 and argued that Bertini had exhausted his administrative treatments. Bertini reached out to his member of congress, who wrote the USPTO in 2022, and the Workplace issued a Suspension Order shortly after. That Order said that “Opposer has not established the required ingredient of precedence”, so “the Board has suspended the cancellation continuing till the enchantment of the opposition case is accomplished.” Nonetheless, there was nonetheless no motion on the cancellation case.
Bertini additionally requested a “Listening Session” with USPTO Director Kathi Vidal however obtained no substantive response. He additionally requested constituent companies from Senator Marco Rubio; wrote on to Chief Administrative Regulation Choose Gerard Rogers; and petitioned for the Director to resolve the case, all to no avail.
The petition offered the next particular questions:
- Did the TTAB fail to resolve the Cancellation for a legitimate cause?
- Was the Cancellation case suspended for a legitimate cause?
- Did the TTAB fail to resolve Bertini’s Movement for Reconsideration of the Suspension Order for a legitimate cause?
- Did the TTAB act in an arbitrary and capricious method by failing to resolve the Cancellation which was marked “Prepared for Determination” on February 23, 2021?
- Does the TTAB’s and USPTO’s failure to resolve the case represent a violation of the Administrative Process Act at 5 U.S.C. § 706(1), and §§ 706(2)(A)-(E).
Bertini didn’t ask the CAFC to direct the USPTO to resolve the case in any specific manner, however simply to resolve it.
However in at this time’s Order, the court docket defined that “[w]hile it’s true that Mr. Bertini filed these cancellation proceedings years in the past, we can’t say that the Board clearly abused its discretion in staying these proceedings pending decision of the opposition proceedings, notably given Mr. Bertini himself argued in favor of their relatedness.”
The CAFC additionally mentioned it’s not clear that the Board’s delay of the proceedings was unreasonable “because the Board has lifted the keep and indicated {that a} resolution shall be issued in the end, which we anticipate shall be issued promptly.”
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Rejection
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