In Brief: Tacking is a very limited way to extend the protection of a trademark.
Here’s What Happened:
In 1968, The Beatles’ recording company, Apple Corp. registered the trademark “Apple Music” for “gramophone records featuring music”. Apple Inc. purchased the mark from Apple Corp.
In 2015, Apple Inc. applied to register “Apple Music” for a lot of services including “live musical performances”. Charles Bertini, a professional jazz musician opposed the registration because he had been using the unregistered mark “Apple Jazz” since 1985 which predated Apple Music. The Trademark Trial and Appeal Board dismissed Charles’ opposition and approved the application. The Board used the theory of “tacking” and found that Apple had a priority due to the 1968 date when The Beatles started using the trademark; even though the mark only related to recordings of music and not live music.
Charles appealed to the US Court of Appeals for the Federal Circuit. The Federal Circuit used this opportunity to clarify the propriety of tacking an application to an earlier registration. The Federal Circuit stated that tacking was strictly applied. The party seeking to tack bears the burden to show that the old and new marks create the same, continuing commercial impression for the same goods. In this case, Apple was trying to tack a prior registration onto a registration for different goods and services. But, an applicant cannot establish priority for all of its listed services simply by proving priority for a single listed service.
The Federal Circuit determined that no reasonable person would conclude that recorded music was substantially identical to live musical performances. Therefore, Charles had a priority in his use of “Apple Jazz” and he was entitled to prevail in his opposition against Apple’s application to register “Apple Music” for live performances.
Why You Should Know This: Tacking can be useful when a registrant has made subtle changes to a registered mark. However, tacking is not available to enlarge the use of the trademark.
Case Information: Charles Bertini v. Apple Inc., 63 F.4th 1373 (Fed. Cir. 2023).