Trademarks are an integral part of our daily lives. Whether it's the Apple logo on our iPhones or the Nike swoosh on sneakers, trademarks help identify and distinguish the sources of goods and services.

While we may not always notice it, over time companies often make small changes to their trademarks to alter the color, font, design, or wording of the mark. Even if new versions of the mark are literally different, a company can maintain its priority rights to a mark, which may date back decades, through a doctrine known as “tacking.”

The scope of tacking was a central question in a recent Federal Circuit Court of Appeals case, Bertini v. Apple Inc. (April 4, 2023), where the court was tasked with deciding whether Apple could rely on its priority rights through tacking for all the goods and services listed in its trademark application simply because it had priority in one of the listed services.

By denying Apple's claim to priority for all of the goods and services in its application, the Federal Circuit issued a decision of first impression regarding the use and restrictions of trademark tacking. This decision has important implications for trademark owners. In this article we explain why trademark owners should exercise caution when modifying and updating their marks if they wish to preserve the distinctiveness and goodwill associated with their brand and maintain priority rights.

Below, we delve into the legal intricacies of trademark tacking, the reasons behind the court's ruling, and the impact on trademark owners in the future.

Trademark Tacking

The doctrine of trademark tacking allows a company to modify an existing trademark while still maintaining rights to an earlier priority date.

In general, trademark priority begins on the date the trademark is first used in commerce. The first person or business to use a mark in connection with a specific product or service typically has priority over subsequent users of the same mark, is the owner of the mark, and can prevent others from using a confusingly similar mark.

If a trademark owner makes significant changes to a mark, such as changing the wording or design, the modified mark is usually considered a different mark with a new priority date for purposes of priority rights.

When a trademark owner adds or modifies elements of a mark, but the mark maintains the same, continuing commercial impression, not materially differing from or altering the character of the original mark, and the goods or services are substantially identical, the changes are considered minor and the doctrine of trademark tacking holds that the owner can rely on the original priority date.

For example, if a company uses the trademark APPLE in connection with the production of gramophone records, and later modifies the mark to APPLE MUSIC for the production and distribution of sound recordings, it should still be able to rely on the original priority date for its trademark because the addition of MUSIC does not materially differ from the original mark, and sound recordings are considered a modern equivalent to gramophone records, therefore substantially identical.

Similarly, in American Sec. Bank v. American Sec. & Trust Co., 571 F.2d 564, 567 (C.C.P.A. 1978), the court ruled that the change from AMERICAN SECURITY to AMERICAN SECURITY BANK did not alter the commercial impression for purposes of tacking. In Dreyfus Fund, Inc. v. Royal Bank of Canada, 525 F. Supp. 1108 (S.D.N.Y. 1981), the change of a logo from a realistic lion to a stylized lion also created a continuing commercial impression, and in both cases, tacking to achieve priority was permitted.

The rights maintained through trademark tacking can be invaluable for a trademark owner to preserve the distinctiveness and goodwill associated with their brand over time, while also avoiding the risk of losing a priority date and potentially losing their trademark rights.

Bertini v. Apple Inc.

Charles Bertini, a professional jazz musician, has used the mark APPLE JAZZ in connection with festivals and concerts since 1985. In the mid-1990s, Bertini began using the APPLE JAZZ mark to issue and distribute sound recordings under his record label. Apple Inc. began using the mark APPLE MUSIC in 2015 when it launched its music streaming service, and sought to register the mark for fifteen (15) categories of services, including the production and distribution of sound recordings, live musical performances, and websites featuring entertainment and sports information.

Apple claimed priority for its APPLE MUSIC mark for the production and distribution of sound recordings by seeking to tack rights to use of the APPLE mark for gramophone records, rights it acquired in 2007 from Apple Corps, the record company of The Beatles. Despite commencing use of APPLE MUSIC almost thirty years later than Bertini's 1985 first use date, Apple argued that not only was it entitled to a priority date of 1968 for the distribution of sound recordings, but for all the services identified in its application.

Bertini opposed Apple's registration of APPLE MUSIC on the grounds that it would likely cause confusion with Bertini's common law trademark APPLE JAZZ. The United States Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) found that Apple was entitled to rely on Apple Corps' 1968 use of APPLE, notwithstanding it only first used the APPLE MUSIC mark in 2015, and thus had priority over Bertini. The TTAB dismissed Bertini's opposition and denied his subsequent motion for reconsideration. Bertini appealed to the Federal Circuit, which reversed.

The Federal Circuit found that relying on an earlier priority date, through tacking on one good or service does not grant priority for every other good or service in a trademark application. While Apple was entitled to rely on its previous use of APPLE for gramophone records, and its use of APPLE MUSIC for the production and distribution of sound recordings, that did not establish priority for the laundry list of other services in its application.

The court stated that, “[a]n opposer can block a trademark application in full by proving priority of use and likelihood of confusion for any of the services listed in the trademark application. . . . The reverse is not true. [A] trademark applicant cannot establish absolute priority for the full application simply by proving priority of use for a single service listed in the application.”

Thus, Bertini, who had already used the trademark APPLE JAZZ in connection with live musical performances, was entitled to prevail, based on his 1985 priority, and Apple could claim no earlier date.

Importantly, the Federal Circuit stated, as a matter of first impression, that “the goods or services must be substantially identical for tacking to apply,” (emphasis added), such as new goods or services that are within the normal evolution of a previous line of goods or services. In other words, the two must create the same continuing commercial impression so that consumers consider both as the same mark and the same goods or services. Otherwise, to allow tacking for other goods/services could well be at odds with the doctrine that trademark rights arise through actual use. Consistent with its position, the court noted, “[n]o reasonable person could conclude . . . that gramophone records and live musical performances are substantially identical,” the court reversed the TTAB’s dismissal of Bertini's opposition to Apple's application to register APPLE MUSIC.

Conclusion

Bertini v. Apple Inc. is significant because it focuses on the scope of the tacking inquiry and serves as an important reminder to trademark owners to consider their use of a mark over time. Trademark tacking requires not only that the marks create the same commercial impression on consumers, but that the new and old goods or services be “substantially identical,” or similar enough to create the same commercial impression.

Trademark owners should exercise caution when modifying and updating their marks and consider dividing their applications to separate goods/services that can be tacked from goods/services that cannot.

While it can be tempting to refresh a brand, it is important to seek advice from trademark counsel when considering the tacking doctrine in order to maintain priority rights.