“[W]e won’t infer from Respondent’s objections to Petitioner’s discovery requests that no responsive paperwork exist, significantly given the objections made concurrently with the responses.” – TTAB opinion.
Supply: TTAB opinion (2021)
The Trademark Trial and Enchantment Board (TTAB) on Wednesday, March 20, denied APPLE JAZZ mark owner Charles Bertini’s petition to cancel Apple, Inc.’s mark APPLE for leisure companies. Whereas the Board discovered that Bertini had “confirmed and maintained his entitlement to a statutory explanation for motion,” it in the end held that he had didn’t make a prima facie exhibiting of Apple’s abandonment of the APPLE mark for these companies.
The choice is the newest in a long-running battle between Bertini and Apple over the usage of the APPLE mark for leisure companies. Bertini’s APPLE JAZZ mark was registered in New York state in 1991 for leisure companies, and he started utilizing the mark properly earlier than that, in 1985. Unaware that he didn’t have a federal registration, Bertini filed an opposition towards Apple, Inc.’s federal registration for “Apple Music” in 2016, together with an software to register APPLE JAZZ with the USPTO.
Individually, after Apple used the APPLE mark as a protection within the Opposition, Bertini filed a Petition to Cancel it (Registration No. 4088195) on March 19, 2018, for nonuse/ abandonment, arguing that Apple, Inc. by no means used the mark in commerce for leisure companies listed within the Registration Certificates.
On February 23, 2021, the TTAB marked the Petition to Cancel “Prepared for Determination,” however then on February 9, 2022, it issued an order suspending proceedings, stating that it had simply come to the Board’s consideration that the associated Opposition case could have an effect on the end result of the cancellation petition. Nonetheless, Bertini argued that the Board was conscious of the Opposition in 2018, as the quilt sheet on the Opposition submitting referenced the associated continuing (Opposition No. 91229891, Serial No. 86659444).
In April 2023, the U.S. Court of Appeals for the Federal Circuit (CAFC) said the TTAB had legally erred in permitting Apple to say absolute precedence for the entire companies listed in its software based mostly on a exhibiting of precedence for one service. The courtroom then denied Apple’s request for rehearing in July, and on November 9, 2023, the TTAB denied Apple’s motion to amend and terminated the opposition.
Then, in January of this year, the CAFC denied Bertini’s petition for a writ of mandamus asking the courtroom to order the TTAB to resolve the trademark cancellation case however it famous that it anticipated the TTAB determination to subject “promptly.”
In its dialogue of the cancellation petition, the TTAB defined that Bertini’s proof of abandonment–which included that Apple’s web site, apple.com, in addition to its Wikipedia entry, confirmed that Apple “doesn’t use APPLE by itself however fairly surrounded by different matter, e.g., APPLE STORE, APPLE TV or APPLE MUSIC, and that its method of use exhibits APPLE as a commerce identify and never a supply identifier”; and that Apple didn’t didn’t produce particular paperwork requested in discovery–was inadequate. “[W]e won’t infer from Respondent’s objections to Petitioner’s discovery requests that no responsive paperwork exist, significantly given the objections made concurrently with the responses,” the TTAB wrote.
General, the Board discovered Bertini’s proof of abandonment to be solely circumstantial and listed quite a few actions he might have taken to compel Apple to provide the proof he was searching for:
“Petitioner might have taken the oral testimony deposition of Respondent to establish whether or not Respondent had certainly discontinued use of it registered mark and in that case, whether or not it had any intent to renew use, however elected not to take action. Petitioner additional might have compelled responses to his discovery requests or amended his requests to obviate the objections raised by Respondent. Petitioner, nonetheless, elected to proceed with discovery responses consisting largely of procedural objections fairly than substantive responses and proof exhibiting use of the APPLE mark that Respondent believed was inadequate.”
The TTAB additionally rejected Bertini’s arguments that Apple needs to be sanctioned for submitting a number of copies of the identical proof to “burden and harass counsel for Petitioner,” explaining that “[w]hile we discover Respondent’s evidentiary submissions to be lower than centered and concise, we disagree that Respondent’s conduct in submitting its proof needs to be topic to sanction.”
Nonetheless, Charles Bertini’s counsel, James Bertini, mentioned the combat to register APPLE JAZZ continues:
“In our persevering with effort to register my consumer’s trademark APPLE JAZZ, which he started utilizing in 1985, we intend to enchantment this determination of the USPTO. It’s well-known which companies are supplied by Apple Inc., and an ‘APPLE’ leisure service was by no means listed amongst a prolonged listing of its items and companies on its web site. Nonetheless, the trademark courtroom determined that it’s one way or the other attainable that Apple Inc. makes use of ‘APPLE’ for leisure companies. The corporate makes use of iTunes and Apple Music for leisure companies. Notably, the trademark courtroom particularly acknowledged that its determination is NOT a precedent.”
