Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA897963
`05/19/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`Proceeding
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`Party
`
`Correspondence
`Address
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91229891
`
`Plaintiff
`Charles Bertini
`
`JAMES BERTINI
`423 KALAMATH STREET
`DENVER, CO 80204
`UNITED STATES
`Email: jamesbertini@yahoo.com, iklych@yahoo.com
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`Submission
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`Motion for Summary Judgment
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
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`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 05/20/2018
`James Bertini
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`jamesbertini@yahoo.com
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`/james bertini/
`
`05/19/2018
`
`Opposers Motion for Summary Judgment.pdf(64632 bytes )
`Declaration of James Bertini.pdf(17093 bytes )
`Declaration of Charles Bertini.pdf(15196 bytes )
`Declaration of Irina Bertini.pdf(29819 bytes )
`James Bertini Exhibits.pdf(362579 bytes )
`Exhibit 75 Irina.pdf(5271355 bytes )
`Exhibit 140 Irina.pdf(1174572 bytes )
`Exhibits 62-73 Irina.pdf(5509007 bytes )
`Exhibits 74-83 Irina.pdf(2362920 bytes )
`Exhibits 121-129 Irina.pdf(5391790 bytes )
`Exhibits 135-142 Irina.pdf(1534004 bytes )
`Apple Exhibits Irina.pdf(968265 bytes )
`Exhibits 123 and 132.pdf(1122127 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91229891
`Serial No. 86659444
`Mark: APPLE MUSIC
`Filing Date: June 11, 2015
`Publication Date: May 10, 2016
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` OPPOSER’S MOTION FOR SUMMARY JUDGMENT
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`CHARLES BERTINI,
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`
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`APPLE INC.,
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`
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`Opposer
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`Applicant.
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`
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`v.
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`
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`Pursuant to Federal Rules of Civil Procedure § 56(a) and (g) and TBMP § 528, Opposer
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`hereby moves this Board for summary judgment granting his Opposition to the registration of the
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`mark Apple Music. Opposer believes that the applicable records of the U.S. Patent & Trademark
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`Office, the pleadings, the discovery responses, the documents produced, declarations, and internet
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`evidence produced or submitted establish that there is no genuine issue as to any material fact and
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`that Opposer is therefore entitled to judgment as a matter of law.
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`Both Opposer and Applicant have filed Motions to Compel in early April 2018, followed
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`by Opposer’s Motion to Suspend (because he filed a Petition to Cancel one of Applicant’s marks
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`used as an affirmative defense in this Opposition and it seemed that the cancellation case should
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`take priority). Opposer considered that the Board might suspend this case, but no suspension
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`order was issued. Opposer’s attorney then sought a consent extension from Applicant’s attorney
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`last week who responded by proposing that the interlocutory attorney be contacted. The two
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`attorneys agreed to place a conference call until time ran out to accomplish this. Opposer then
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`had no choice but to follow the existing schedule, and hence it files this Motion for Summary
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`Judgment as required by applicable TTAB rules and one day prior to the deadline for making its
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`pre-trial disclosures. I certify that I called Applicant attorney Joseph Petersen to inform him that
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`I will make this Motion, and he stated that his client will oppose it.
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`1
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`

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`PRELIMINARY STATEMENT
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`APPLE JAZZ began operation in 1985 as a jazz band (Charles Bertini Declaration (“Charles
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`Decl.”) Exs. 1, 123) with its annual APPLE JAZZ concerts held in the City of Cortland, New
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`York. New York State is the second largest apple-producing state and home of the Cortland
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`apple. The word “apple” in the Opposer’s mark refers to the fruit, and APPLE JAZZ was selected
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`as the service mark since the jazz genre of music was being promoted in apple country. Charles
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`Decl. Exs. 27, 83. A reservoir of goodwill in the APPLE JAZZ service mark exists in a number
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`of dedicated customers, fans, musicians and contractors of APPLE JAZZ which Charles Bertini
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`developed during more than three decades.
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`On June 5, 2016, Charles Bertini filed an application to register the mark APPLE JAZZ in
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`Class 41, Serial No. 87060640. In an official Trademark Office Action dated September 17, 2016
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`this application was refused registration under Section 2(d) of the Lanham Act because it was
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`deemed to be likely to cause confusion between Opposer’s mark and pending U.S. Application
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`Serial No. 86659444 for mark APPLE MUSIC (the “Mark”). Ex.130. James Bertini Declaration
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`(“James Decl.”). On September 2, 2016 Opposer filed a Notice of Opposition to this U.S.
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`Application Serial No. 86659444.
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`In his Response to Office Action Opposer demonstrated with multiple exhibits his continuous
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`use of the mark APPLE JAZZ since June 5, 1985 and has also shown that no standard character
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`mark “apple” was registered in Class 9 or Class 41 by Applicant or its predecessor prior to
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`Opposer’s date of first use in commerce of June 5, 1985. (James Decl, Ex. 68). The examining
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`attorney suspended the application pending the outcome of the instant Opposition. On March 19,
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`2018 Opposer filed a Petition to Cancel Registration No. 4088195 for APPLE because this mark
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`was raised as an affirmative defense in the Opposition. James Decl.
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`I.
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`SUMMARY OF UNDISPUTED FACTS
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`2
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`

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`1. Opposer began using his mark APPLE JAZZ in commerce in Class 41 at least as early as June
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`5, 1985 and has maintained continuous use in commerce of his mark to date. Opposer is a sole
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`proprietor. Charles Decl., Exs 1-51, 84-96, 98-102, 105-109, 111-120.
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`2. Opposer began offering his services under mark APPLE JAZZ on his website applejazz.com
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`as early as in 1998 and he continues to offer his services on this website. Charles Decl., Irina
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`Bertini Declaration (“Irina Decl.”), Exs. 70, 124.
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`3. Opposer filed an application with Serial No. 87060640 for the trademark APPLE JAZZ in
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`Class 41 dated June 5, 2016 with first use in commerce date at least as early as June 5, 1985.
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`Charles Decl., Ex. 132.
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`4. On June 11, 2015 Applicant filed an application to register the mark APPLE MUSIC
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`Application Serial No. 86659444 for identified services in Class 41. Answer P1, James Decl.
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`Ex. 134.
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`5. Application Serial No. 86659444 was filed on an intent to use basis under Section 1(b) and
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`Section 44(d) of the Trademark Act. James Decl., Ex. 134
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`6. The foreign filing date for the Mark is May 18, 2015. James Decl., Ex.134.
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`7. The Declaration dated June 11, 2015 and filed with the Mark under 18 U.S.C. § 1001 signed
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`by the Applicant’s attorney Thomas R. La Perle states: “The signatory believes that to the best of
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`the signatory's knowledge and belief, no other person has the right to use the mark in commerce,
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`either in the identical form or in such near resemblance as to be likely, when used on or in
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`connection with the goods/services of such other person, to cause confusion or mistake, or to
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`deceive.” James Decl., Ex. 134.
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`8. On June 11, 2015 there were two live, registered marks in Class 41: APPLEJAXX and APPLE
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`JAM. Irina Decl., Exs. 127, 129.
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`9. On July 26, 2007 an Application for standard character mark AppleJaxx in Class 041 was filed
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`and no likelihood of confusion was found by the examining attorney. On July 14, 2008 an
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`
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`3
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`

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`opposition to the application of AppleJaxx was filed by Applicant. However, subsequently on
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`October 21, 2008 this mark was registered with Reg. No. 3519038. Irina Decl., Ex. 127.
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`10. A Registration Certificate for standard character service mark APPLE JAM in Class 41 was
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`issued on March 15, 2011. The application for this mark was not opposed by anyone. The Office
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`Action dated October 28, 2010 states: “The Office records have been searched and there are no
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`similar registered or pending marks that would bar registration under Trademark Act Section
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`2(d), 15 U.S.C. §1052(d). TMEP §704.02”. Irina Decl., Ex.121.
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`11. Since as early as October 3, 2011 Opposer communicated with the iTunes Store Legal Team
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`regarding a license agreement and such communication resulted in the Cloud Service License
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`Agreement between Applicant and Opposer’s AppleJazz Music signed in January 2012. Charles
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`Decl., Ex. 98.
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`12. The Harry Fox Agency, Inc., the licensing subsidiary of the National Music Publishers’
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`Association, has represented Opposer as APPLEJAZZ MUSIC since September 3, 1998. Charles
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`Decl., Ex. 84.
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`13. Applicant uses as an affirmative defense to this Opposition certain APPLE marks with
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`Registration Nos. 2,034,964, 3,317,089 and 4,088,195. Answer PP3, 4.
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`14. Applicant stated in its Answer “On information and belief, the dates of first use and first use
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`in commerce claimed in Registration Nos. 2,034,964 and 4,088,195, predate the dates of first use
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`and first use in commerce claimed by Opposer in the Notice of Opposition and with respect to
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`APPLE JAZZ in Application Serial No. 87/060,640.” Answer P4.
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`15. An application for standard character mark APPLE Reg. 4088195 was filed in the USPTO by
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`Applicant on March 22, 2008 with filing basis sections 1(b) and 44(d) and asserting a claim of
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`priority based on European Community application number 6313316 with foreign filing date
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`September 28, 2007. Irina Decl., Ex. 138; James Decl., Ex. 128.
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`16. In the Declaration filed with the Application for the ‘195 mark, Applicant stated: “…to the
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`best of his/her knowledge and belief no other person, firm, corporation, or association has the
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`4
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`

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`right to use the mark in commerce, either in the identical form thereof or in such near
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`resemblance thereto as to be likely, when used on or in connection with the goods/services of
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`such other person, to cause confusion, or to cause mistake, or to deceive.” Irina Decl., Ex. 138.
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`17. On May 11, 2010 a Notice of Allowance was issued for the ‘195 mark. Two extensions of
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`time to file a Statement of Use (“SOU”) were requested by Applicant. Irina Decl.
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`18. On November 11, 2011 an SOU was filed for the ‘195 mark together with a Specimen, a
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`Declaration and another SOU Extension Request. Irina Decl.
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`19. In the SOU Extension Request for the ‘195 mark Applicant attorney stated: “The applicant
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`… is currently filing a Statement of Use (SOU), but that if the USPTO finds the SOU to be fatally
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`defective, the applicant will need additional time to file a new SOU”. Irina Decl., APPLE000462.
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`20. In the above SOU Applicant’s attorney stated: “The mark was first used by the applicant, or
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`the applicant's related company, licensee, or predecessor in interest at least as early as
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`03/01/1981, and first used in commerce at least as early as 03/01/1981, and is now in use in such
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`commerce”. Irina Decl. Ex. 64, P4. No evidence of such use on the date 03/01/1981 was
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`provided with this SOU. Irina Decl.
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`21. In the Applicant’s Opposition to Opposer’s Motion to Compel filed April 25, 2018 regarding
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`Opposer’s Request for Production No. 15 which requested “All documents concerning use of the
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`trademark APPLE in commerce by the Applicant's related company, licensee, or predecessor in
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`interest in the territory of the United States for each type of activities listed below for period
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`January 1, 1981 through November 11, 2011,” the Applicant stated at P8, “Apple did not find any
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`documents in its possession, custody, or control relating to use of this mark by a ‘related
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`company, licensee, or predecessor in interest.’” James Decl., Ex. 133 PP7, 8.
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`22. In the above SOU Applicant’s attorney stated: “The applicant is submitting one specimen
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`…consisting of a(n) A page from Applicant's website showing use of the applied for mark
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`APPLE in use for education and training services course offerings.” Irina Decl., Ex. 64, P4.
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`23. Applicant’s website is apple.com. Irina Decl.
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`5
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`

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`24. Applicant Apple, Inc. was known before 2007 as Apple Computer, Inc. Irina Decl. Ex. 126.
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`25. The website archive.org (“Webarchive”) provides screenshots of websites which were saved
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`for many dates in the past. Irina Decl., Ex. 135.
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`26. On the date of the SOU, Webarchive saved screenshots of Applicant’s website multiple
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`times. Irina Decl.
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`27. On the date of the SOU, Applicant offered goods on its website with individual brand names
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`for each, e.g. Mac, iPod, iPhone, iPad, AppleTV, iOS and iTunes. Irina Decl. Ex. 125.
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`28. On the date of the SOU Applicant offered entertainment services on its website under the
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`mark iTunes. The iTunes service is presented as “Your Entertainment. Everywhere.” Irina
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`Decl., Ex. 125.
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`29. On the date of the SOU Applicant offered entertainment services on its website under the
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`mark iCloud. Ex. 125. This is advertised as “iTunes in the Cloud is part of iCloud. It's the new
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`way to store your music and TV shows, and enjoy them on all your devices.” Irina Decl. Ex. 125.
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`30. Applicant announced its new goods or services on its website in a sections titled Hot News
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`and Apple Info. Irina Decl., Ex. 125.
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`31. On the date of the SOU Applicant’s website didn’t offer “entertainment services, namely,
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`production of live musical performances; entertainment services, namely, providing live musical
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`performances online via a global computer network” under standard character mark APPLE.
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`Irina Decl.
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`32. No document was disclosed to Opposer during discovery showing use of standard character
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`mark APPLE in commerce for the above services on the date of SOU or during three years prior
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`to this date or on the date of June 5, 1985. Irina Decl.
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`33. No specimen showing use in commerce of mark APPLE in connection with entertainment
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`services listed in the Registration Certificate No 4,088,195 was ever presented to the USPTO in
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`connection with Reg. No 4,088,195 before 2018. Irina Decl.
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`
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`6
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`

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`34. On January 17, 2012 a Certificate of Registration No 4088195 for Class 41 was issued
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`indicating “Priority claimed under sec. 44(D)… Application No 6313316 filed 9-28-2007”. Irina
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`Decl., Ex. 136.
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`35. The Applicant’s Response on Request for Admission (“RFA”) 9 is:” Applicant admits that the
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`documents comprising Exhibit 3 to Opposer’s First Request for Admission to Apple Inc. appear
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`to be copies of USPTO records relating to U.S Registration No. 4,088,195, which indicate that the
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`priority date claimed in the application underlying the registration is September 28, 2007, and
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`states that such records speak for themselves.” James Decl., Ex. 128.
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`36. USPTO records show that the Priority date for Reg. No 4,088,195 is September 28, 2007.
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`Irina Decl., Ex. 62.
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`37. Reg. Nos 2,034,964 and 3,317,089 were owned by unaffiliated third party Apple Corps. Ltd.
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`(“Apple Corps.”) until 2007 when Apple Corps. transferred them to Applicant. James Decl., Ex.
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`133.
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`38. Apple Corps. Ltd. is a multimedia corporation founded in London in January 1968 by the
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`members of the Beatles. Its chief division is Apple Records. Irina Decl., Ex. 82 P1.
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`39. According to Wikipedia, https://en.wikipedia.org/wiki/Apple_Records : “Apple Records is a
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`record label founded by the Beatles in 1968, as a division of Apple Corps Ltd.” Irina Decl., Ex.
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`78 P1.
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`40. No application for standard character mark APPLE in Class 41 was ever filed by Apple
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`Corps. in the U.S. Irina Decl.
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`41. No application for standard character mark APPLE in Class 9 was ever filed at the USPTO
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`by the Applicant or by Apple Corps prior to June 5, 1985. Irina Decl.
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`42. An Application for a standard character mark APPLE in Class 9 (U.S. Reg. 2034964) was
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`filed by Apple Corps Limited, UK on June 26, 1995 with the following filing basis: 1(a) – using
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`the mark through licensees and 15 U.S.C. 1126(e) – with a foreign registration date January 17,
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`1992. Irina Decl., Ex. 140.
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`7
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`43. A PRIORITY ACTION with mailing date 02/01/96 stated that: “II SECTION 44(E) BASIS
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`NOT PERFECTED An application under Section 44(e) of the Act, 15 U.S.C. 1126(e), must
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`include a certified copy of the foreign registration on which the application is based to receive a
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`filing date. TMEP 806.08. In this case, the applicant has asserted a valid 1(a) basis so a filing
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`date for this application has been received. However, if the applicant intends to rely upon the
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`additional section 44(e) basis, the applicant must submit a certification or certified copy of
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`foreign registration to perfect this basis”. On August 1, 1996 in the amendment to the ‘964
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`application the Applicant requested to “delete reliance on the foreign registration as an additional
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`basis”. Irina Decl., Ex. 140.
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`44. The specimen submitted with the ‘964 application had no date on it. Irina Decl.
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`APPLE000738. The specimen submitted to USPTO on August 4, 2003 shows that the year of
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`production of the Beatles disc is 1995. Irina Decl., Ex. 142, APPLE000758-000759.
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`45. A specimen submitted to the USPTO by Applicant on 02/03/2017 together with Combined
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`Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark
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`under Sections 8 & 9 indicates: “The Apple Years 1968-75”. Irina Decl., Ex. 141,
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`APPLE000676.
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`46. Prior to the registration of this APPLE ‘964 mark, Apple Corps used a graphic of an apple on
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`the label for the records as its trademark. A typical U.S. Apple Records label displayed a graphic
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`of an apple and indicated “Mfd by Apple Records, Inc” (or “Manufactured by Apple Records,
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`Inc”) and “Recorded in England”. Irina Decl., APPLE001642, APPLE001700, Ex.65 P4.
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`47. A variety of other labels were used. Irina Decl., APPLE000561, Ex.65.
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`48. According to Wikipedia https://en.wikipedia.org/wiki/Apple_Records_ discography: “After
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`EMI's contract with the Beatles ended in 1976, the Apple label was finally wound up. The label
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`was reactivated in the 1990s.” Irina Decl., Ex. 79
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`49. The detailed catalog of vinyl records releases of Apple Records in the U.S. shows that there
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`were no releases between December 8, 1975 and December 1, 1994. Irina Decl., Ex. 75.
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`8
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`50. An Application for standard character mark APPLE (Reg. No. 3,317,089) in Class 9 was
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`filed by Apple Corps Limited on 06/04/2004, with a filing basis of 44(e) and referring to foreign
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`registration date 11/16/2000. Registration number 3317089 was issued on October 23, 2007.
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`Irina Decl., Ex.139.
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`51. Applicant admits claimed priority date of foreign registration 11/16/2000. James Decl., Ex.
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`128.
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`52. On November 29, 1999 the domain name applerecords.com belonged to a company unrelated
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`to Applicant, Apple Records, Inc or Apple Corp. There is no evidence of use of this domain name
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`for publishing of website content before the above date. Irina Decl., Ex.71.
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`53. On September 14, 2009 and before this date the domain name applerecords.com doesn’t
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`show any use of mark APPLE by Applicant or Apple Corps. Irina Decl., Ex.71.
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`54. On March 2, 2000 the domain name thebeatles.com was used to publish a page online stating
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`“This is a placeholder page only for Apple Corps Ltd. This site is not live at this time.” Irina
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`Decl., Ex.73.
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`55. On March 2, 2000 and before this date the domain name thebeatles.com doesn’t show any
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`use of mark APPLE for commerce. Irina Decl., Ex. 73.
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`56. According to thebeatles.com website: “30th January, 1969 – the Beatles’ final Live
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`Performance, on the Rooftop of Apple Records”. Irina Decl., Ex. 74.
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`57. Applicant produced webpages from website www.discogs.com as discovery exhibits of
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`Apple Records from https://www.discogs.com/label/25693-Apple-Records. Irina Decl.
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`58. It is stated on this website that there are “unofficial releases, (bootlegs, counterfeits, pirate
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`compilations etc.) that pretend to be a release of the legitimate Apple Records.” Irina Decl.,
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`Ex.66. It is also stated: “Discogs is a user-built discography site. Everyone can contribute and
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`update information as needed.” Irina Decl., Ex. 67. Discogs was “created as a hobby project in
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`2000.” Irina Decl., Ex. 81 P1.
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`9
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`59. Webarchive shows that Apple Records began appearing on the Discogs website
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`https://www.discogs.com/label/25693-Apple-Records only in 2014. Irina Decl., Ex. 81 P2.
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`60. Opposer’s RPD 2 requested “All documents concerning confusion between customers of
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`Apple Corps or Apple Computer, Inc. or Apple Inc., and customers of Apple Jazz from period
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`June 5, 1985 to date.” Applicants responded “Applicant states that, based on its reasonable
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`inquiry and ongoing investigation, it has not identified any documents in its possession, custody
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`or control that are responsive to this Request”. James Decl., Ex. 137.
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`II.
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`ARGUMENT
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` A.
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`
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`Opposer Has Legal Standing to Oppose the Application
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`Opposer submitted evidence that he filed an application, now suspended, with the PTO.
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`That evidence included a copy of an Office action (James Decl., Ex. 130) in which certain of
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`Applicant’s marks were cited as a basis for refusal of Opposer’s application. That evidence
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`clearly provides an adequate basis to find that there is no genuine dispute as to Petitioner’s
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`standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
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`2000); Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990).
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`If the Opposition is denied, Opposer will be damaged because Opposer has used his mark for
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`more than three decades and it may be confused with that of Applicant’s mark. An Opposer must
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`show both “a real interest in the proceedings as well as a ‘reasonable’ basis for his belief of
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`damage.” See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir 1999); see
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`also Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062
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`(Fed. Cir. 2014).
`
` B.
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`Summary Judgment Standards
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`Summary judgment is an appropriate method of disposing of cases in which there is no
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`genuine dispute with respect to any material fact, thus leaving the case to be resolved as a matter
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`of law. Fed. R. Civ. P. 56(c)(1). A party moving for summary judgment has the burden of
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`demonstrating the absence of any genuine dispute as to a material fact, and that it is entitled to
`
`
`
`10
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`

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`judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats
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`Fashions v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987).
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`When the moving party has supported its motion with sufficient evidence that, if unopposed,
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`indicates there is no genuine dispute of material fact, the burden then shifts to the non-moving
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`party to demonstrate the existence of a genuine dispute of material fact to be resolved at trial.
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`Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB 2009).
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` C. Registration of the Mark APPLE MUSIC for the Services Claimed by the
`Opposed Application is Likely to Cause Confusion with APPLE JAZZ
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`Registration of the marks claimed by the APPLE MUSIC Application is barred by Section
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`2(d) of the Lanham Act, 15 U.S.C. § 1052(d), which prohibits registration of a mark that “so
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`resembles a mark registered in the Patent and Trademark Office, or a mark or trade name
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`previously used in the United States by another and not abandoned, as to be likely, when used on
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`or in connection with the goods of the Applicant, to cause confusion, or to cause mistake, or to
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`deceive.” Likelihood of confusion is determined by focusing on whether the purchasing public
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`would mistakenly assume that Applicant’s goods originate from the same source as Opposer’s
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`goods and services, or are associated with Opposer. Paula Payne Prods. Co. v. Johnson Publ’g
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`Co., 473 F.2d 901, 901-02, 177 U.S.P.Q. 76, 77 (C.C.P.A. 1973). This determination is made on a
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`case-by-case basis, On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1084, 56
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`U.S.P.Q.2d 1471, 1474 (Fed. Cir. 2000), aided by the application of the factors set out in In re
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`E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).
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`Some of the DuPont factors and their relation to this case are as follows:
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`(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`connotation and commercial impression.
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`
`APPLE JAZZ is a unitary mark. The test for unitariness inquires whether the elements of a
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`mark are so integrated or merged together that they cannot be regarded as separable. See In re
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`EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573
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`(TTAB 1983). The APPLE JAZZ mark creates a commercial impression separate and apart from
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`the word “apple” or from the word “jazz.” The former word is a fruit, and the latter is a genre of
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`music. Use of either of these words alone could not give one the impression that it is a reference
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`to Applicant’s services and name of the jazz band. The two words together, and in the unique
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`combination where apple precedes jazz, provide an unmistakable impression that the reference is
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`to Applicant’s services and no other. The mark, therefore, creates a single and distinct
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`commercial impression. APPLE JAZZ as a unitary mark should be compared to other marks in its
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`entirety. Jazz is a genre of music, and hence someone could confuse one with the other, making
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`APPLE MUSIC confusingly similar in meaning and appearance to APPLE JAZZ.
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`Applicant has disclaimed the word “MUSIC” in the applied-for mark. It is obvious that Applicant
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`created this new mark APPLE MUSIC as a unitary mark the same way as Opposer did more than
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`30 years ago.
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` (2) The similarity or dissimilarity and nature of the goods or services as described in an
`application or registration or in connection with which a prior mark is in use; (3) The similarity
`or dissimilarity of established, likely-to-continue trade channels.
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`In this case, the identifications set forth in the application and registrations have no
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`restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, these goods
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`and/or services are presumed to travel in all normal channels of trade, and are available to the
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`same class of purchasers. Furthermore, the applications for APPLE JAZZ (UF 3) and APPLE
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`MUSIC (UF 4) show that the services are related.
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` With respect to applicant’s and registrant’s goods and/or services, the question of
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`likelihood of confusion is determined based on the description of the goods and/or services stated
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`in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion
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`Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed.
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`Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16
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`USPQ2d 1783, 1787 (Fed. Cir. 1990)).
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`Absent restrictions in an application and/or registration, the identified goods and/or
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`services are “presumed to travel in the same channels of trade to the same class of purchasers.” In
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`re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-
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`Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir.
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`2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods
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`and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374
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`(TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24
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`USPQ2d 1716, 1716 (TTAB 1992).
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`In this case, the identifications set forth in the application and registrations have no
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`restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, these goods
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`and/or services are presumed to travel in all normal channels of trade, and are available to the
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`same class of purchasers. Further, the application and Opposer’s application both identify
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`recorded music; the application and U.S. Registration No. 3317089 both identify recorded music
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`and the provision of reviews. The application and U.S. Registration No. 4088195 both identify
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`services for providing live music entertainment, information, online publications, reviews and
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`personalized recommendations in the fields of entertainment and music; and, applicant’s
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`“provision of ...recorded entertainment, namely, musical performances” overlaps with the
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`registrant’s “rental of digital entertainment content”, “provision of non-downloadable audio and
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`audiovisual programs” and “entertainment services, namely, providing prerecorded audio and
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`audiovisual content”. Therefore, the services are related.
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`(5) The fame of the prior mark (sales, advertising, length of use).
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`Opposer has used his mark since 1985, and Applicant alleged a foreign filing date of May
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`18, 2015, a difference of 30 years.
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` (12) The extent of potential confusion, i. e., whether de minimis or substantial.
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`The extent of potential confusion is significant because Applicant is a large corporation with
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`a strong web presence. Customers seeking APPLE JAZZ on the internet could end up on
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`Applicant’s website and assume that since jazz is a subset of music they are in the right location.
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`(13) Any other established fact probative of the effect of use.
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`Since Opposer has used his common law mark APPLEJAZZ MUSIC (a) since 1998 with the
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`Harry Fox Agency, and (b) since October 3, 2011 with Applicant, it appears that Applicant
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`decided to adopt the mark almost identical to its customer’s mark. Applicant filed an application
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`for the Mark on July 11, 2015 and Apple Inc. corporate officer and Director of its Trademark and
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`Copyright Group Thomas La Perle made the statement under 18 U.S.C. § 1001. UF7. Now,
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`Applicant claims that Opposer’s mark conflicts with the Mark even though it had actual
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`knowledge of Opposer’s use of APPLEJAZZ MUSIC. Thus, the Declaration of the Apple Inc.
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`officer was false and Applicant should not be allowed to benefit from its bad faith and deliberate
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`concealment of Opposer’s mark from the USPTO.
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`D.
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`
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`The Undisputed Facts Show That Opposer’s Mark Has Priority Rights Over
`Registration Nos. 2,034,964, 3,317,089, 4,088,195 and Application No.
`86659444
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`The Undisputed Facts supported by Declarations and Exhibits show that Opposer has
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`continuously used his mark APPLE JAZZ in commerce for entertainment services since at least
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`June 5, 1985 and has established prior proprietary rights in a mark through actual use in
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`commerce. UF 1, 2.
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`A party may establish its own prior proprietary rights in a mark through ownership of a prior
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`registration, actual use or through use analogous to trademark use, such as use in advertising
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`brochures, trade publications, catalogues, newspaper advertisements and Internet websites which
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`create a public awareness of the designation as a trademark identifying the party as a source. See
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`Trademark Act §§ 2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127. See also T.A.B. Systems v.
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`PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996). Opposer has submitted
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`evidence that it is the owner of its trademark and it is extant, and hence there is no genuine
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`dispute as to either Opposer’s standing or its priority.
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`According to 15 U.S.C. §§ 1052(d), “No trademark by which the goods of the applicant may
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`be distinguished from the goods of others shall be refused registration on the principal register on
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`account of its nature unless it—(d) Consists of or comprises a mark which so resembles a mark
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`registered in the Patent and Trademark Office, or a mark or trade name previously used in the
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`United States by another and not abandoned, as to be likely, when used on or in connection with
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`the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” Consequently,
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`the rights of users nationwide should be considered when determining whether a party is entitled
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`to registration of their mark. See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
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`Competition § 20:15 (4th ed. 2008). Referring to this statute, the court in Patsy’s Italian Rest. V.
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`Banas, 658 F.3d 254, 265 (2nd Cir. 2011) stated: “[T]he very language of the statute contemplates
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`that a mark used anywhere in the United States can be sufficient to block federal registration.”
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`See also Blanchard Importing & Distrib. Co. Societe E. Blanchard Et Fils, 56 C.C.P.A. 716, 717
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`(U.S. Court of Customs