Apple’s latest battle with Apple has been a blow for the owner of APPLE JAZZ
“Bertini contended in the [joint discovery] letter that ‘the only reasonable conclusion for Apple’s eight-year delay in producing these documents is that it doesn’t have them.'”
Professional trumpet player Charles Bertini has for now lost his latest bid to cancel trademark rights owned by Apple, Inc. covering the use of the company’s name in connection with entertainment services.
Bertini filed the lawsuit in the Northern District of California in June 2024. It was the latest effort in his nearly decade-long battle to obtain a federal trademark registration for APPLE JAZZ, a mark Bertini has used to market live entertainment since 1985.
Bertini’s application to register his common law mark for APPLE JAZZ, filed in June 2016, was refused due to a likelihood of confusion with Apple’s service mark APPLE and trademark application for APPLE MUSIC. Bertini’s and Apple’s trademarks were both filed in Class 41, which is for entertainment services. Although the U.S. Court of Appeals for the Federal Circuit ruled in April 2023 that Apple was not allowed to claim absolute priority for each of the services listed in its applications, the Trademark Trial and Appeal Board (TTAB) in March 2024 struck down Bertini’s petition to cancel APPLE in Class 41 for failure to make a prima facie showing of abandonment.
Bertini appealed, but Apple filed a seldom-used Notice of Election at the Federal Circuit, which cancelled the appeal, and Bertini said put them in the position of having to file suit to cancel in a district court in order to challenge the TTAB decision.
In her Thursday, January 16, order granting Apple’s Motion to Dismiss Bertini’s complaint, Judge Yvonne Gonzalez Rogers said Bertini failed to “adequately plead facts meeting his prima facie burden to show abandonment.” According to Judge Rogers, the record at the TTAB contained specimens of use showing “use of the marks for education and entertainment” and that Apple had used the marks as of November 11, 2011. The order stated: “[P]Laintiff has not pleaded facts alleging the marks used on November 11, 2011 were no longer in use three years later.” Plaintiff’s allegations are therefore unwarranted, conclusory deductions of facts. Apple’s motion for a stay of discovery is still before a magistrate. Bertini submitted a Joint Discovery Letter in December, in which Bertini asked Apple to produce certain documents that show use in commerce of a mark prior to a court’s decision regarding the motion to dismiss. Bertini wrote that the only reasonable conclusion to be drawn from Apple’s eight year delay in producing the documents was that they don’t exist. Apple stated that it would produce all the documents requested “to the extent that is relevant following the Court’s decision on Apple’s pending motion for dismissal.”
Eileen McDermott, Editor-in Chief of IPWatchdog.com is a veteran IP and legal journalist. Eileen McDermott is a veteran IP journalist and has held editorial and management positions at
.
