Apple Music Trademark Ruling Leaves ‘Tacking’ Standard Unclear

Apple Inc. ran into a wall while trying to extend trademark rights on vinyl records to “Apple Music” music performances, though attorneys still aren’t sure exactly where that wall is.

Apple tried to “tack” a 1968 priority date from gramophone trademark rights it bought in 2007 onto an “Apple Music” mark covering live performances, among other services. But in a matter of first impression, the US Court of Appeals for the Federal Circuit found the products differed too much for tacking to apply and shot down the application.

The doctrine of tacking lets brand owners modify their trademarks without losing the original priority date as long as the new mark is similar enough to create the same commercial impression among consumers. The Trademark Trial and Appeal Board validated Apple’s tacking as it shot down opposition to the tech giant’s application by the owner of a 1985 “Apple Jazz” mark for live music.

The Federal Circuit’s reversal laid down standards cabining tacking’s reach to different goods and services. But the short, 12-page opinion gave few examples to illustrate its requirement that goods and services be “substantially identical” for tacking, with an allowance for “the normal product evolution” of the original product.

The outcome sets relatively narrow bounds for tacking, cutting off paths the TTAB seemed to leave open. But the vague language may still allow expansion, including into the metaverse, some attorneys said.

“I thought it was pretty vague. It does leave a lot of questions open as well as a lot of doors open,” IP attorney Dyan Finguerra-DuCharme of Pryor Cashman LLP said. “It’s odd in the sense that it goes into detail, coming up with this new amorphous standard—but not really coming up with a new standard.”

The outcome still indicates the importance of care in deciding what goods or services a registration covers—both when tacking and initially applying for an initial mark, attorneys said. Efforts to tack need to be limited enough that the earlier registration plausibly covers the new goods. That becomes easier the broader the products covered in the initial application.

“When expanding into new goods and services, you have to look backwards and forward,” trademark attorney William Manske of Robins Kaplan LLP said.

Second Bite of the Apple

Apple tussled with the Beatles’ Apple Corps Ltd. three separate times over trademark rights to “Apple,” with the older music company first suing the then-nascent computer company in 1978. Apple settled, and agreed not to venture into music. But later versions of its computers’ ability to play back music prompted another suit in 1989 and a 1991 settlement.

The creation of the iTunes Music Store led to another suit in 2003, and Apple acquired rights to the “Apple” trademark covering “gramophone records for music” in a 2007 settlement. But when Apple tried to register “Apple Music” to cover various products including live music performances, Charles Bertini objected based on his “Apple Jazz” trademark that he’d used for music festivals since 1985.

The TTAB dismissed the opposition, holding that the 1968 mark gave Apple priority over Bertini. It found the music-based “set of the goods” to be “substantially identical” to gramophone records, rejecting the argument that Apple’s old trademark had to cover each good that the new mark would cover.

But the Federal Circuit rejected the retroactive expansion of rights and said Bertini’s priority on musical performances sank the application.

“The issue for tacking is whether Apple Corps had the goodwill to transfer. And they didn’t,” trademark attorney Britt Anderson of Perkins Coie LLP said.

A Different Standard

Tacking originated in lower courts before the Supreme Court endorsed it in its 2015 Hana Financial v. Hana Bankruling. It ruled that the permissibility of tacking was often a question of fact for a jury because it hinged on consumer perception.

The doctrine was crafted because brand owners “ought to be permitted to make certain modifications to their marks over time without losing priority,” the high court said. The evolution of the Morton Salt girl’s appearance since she first appeared in 1914 is an oft-cited example.

Brands also sometimes attempt to use tacking to thwart a priority-based challenge to an application by acquiring an even older mark as Apple did, trademark Attorney Paul J. Kennedy of Troutman Pepper Hamilton Sanders LLP said. But typically it involves identical goods and services, he said.

The reach of trademark rights themselves generally aren’t as tightly confined. Apple Corps could have blocked Bertini from registering his mark in the 1980s by showing consumers likely would have presumed the music label was affiliated with “Apple Jazz” concerts.

But Manske said priority and likelihood of confusion are two distinct questions. Determining whether tacking can backdate an applicant’s priority for a mark is independent of any alleged infringement by another party.

“The priority issue in tacking looks at the goods and services from one entity—Apple—and whether they align. What goods and services can we allow them to register?” Manske said. Likelihood of confusion regarding a second mark is “a second- or third-order question.”

Kennedy said the “net takeaway is that tacking remains narrow.” He also wondered whether the fact that Bertini had used his mark for 30 years didn’t seep into the court’s thinking.

“I can see how they arrived at that decision,” Kennedy said. “But I’m also left with, ‘Gee, the guy was out there for 30 years. That was a long time, and I think that’s not right.’”

At the same time, Kennedy and others said concerns about prejudice to Bertini could be better addressed by laches, an equitable doctrine that bars unreasonable, prejudicial delay in enforcing one’s rights. If whoever owned the “Apple” mark for records—Apple Corps until 2007, Apple afterward—knew about “Apple Jazz” but didn’t act, Apple would struggle to cancel the mark or claim infringement.

A ‘Normal Evolution’

The opinion, despite its “substantially identical” standard, did leave wiggle room—albeit ambiguously, attorneys said. The panel said goods or services that remained essentially the same despite technological advances could be tacked. It provided an example: compact disc music trademarks could tack to a gramophone records registration. But the judges offered little other guidance.

“The big quote, the big thing that I think is going to get cited from this case going forward: You can tack ‘within the normal evolution of the previous line of goods and services,’” Manske said. “What the ‘normal evolution of goods and services’ is is just ripe for future disputes.”

DuCharme read the opinion as leaving a “door open to expand into the metaverse, where makers of physical products can tack registrations for NFTs to the priority date of their physical-world counterparts.

“You should be able to tack onto your prior rights,” she said.

But trademark attorney Felicia Boyd of Norton Rose Fulbright LLP said she wasn’t sure if that was the case—though she said Hermes’ ability to win an infringement judgment against an artist over a MetaBerkin handbag NFT showed that separate registration of NFTs is unnecessary, at least for famous brands.

Still, while “excited” to see a clearer standard laid down for tacking, she said the court left a lot of gray area in closer calls between different goods in the same class, like hats and T-shirts. Manske agreed.

“It’s a relatively open ended test that I think will continue to be a part of future disputes,” Manske said.

The case is Charles Bertini v. Apple Inc., Fed. Cir., No. 21-2301.