In this appeal, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision sustaining an opposition proceeding and refusing registration of the standard character mark #TODECACHO for hair combs. Procedural and Substantive: the Federal Circuit held that the TTAB properly allowed Framboise to extend its trial period; and that substantial evidence supported the TTAB’s finding that Framboise established prior use. Opinion by Judge Lourie, joined by Judges Linn and Stoll.
In Brazilian Portuguese the colloquial phrase – “to de cacho” – is often used to mean “I am angry.” In the context of this case, however, it references difficult to control curly hair. (more…)
Apple Records was founded by The Beatles in 1968 and quickly became a success, producing many hit records in the late 1960s and early 1970s. Apple Computer Company was founded in the mid-1970s and almost immediately sued for trademark infringement by Apple Corps (the parent company of Apple Records). The companies eventually settled the case with Apple Computer paying $80k and agreeing to stay out of the music business. The companies clashed again in the 2000s as Apple Computer (now Apple Inc.) expanded into music via iTunes and other services. The two eventually reached another settlement that transfers substantial rights over to Apple Inc. to use the mark in connection with its music-related products and services.
In 2015 Apple began using the mark APPLE MUSIC as its new music streaming service. It also filed to register a trademark on the mark.
Meanwhile, Charlie Bertini created his band AppleJazz Band back in 1984 to perform at the AppleJazz festival. He also created the AppleJazz record label. Bertini filed an opposition to Apple’s TM registration which the TTAB eventually dismissed. On appeal here, however, the Federal Circuit has reversed — holding that Apple had not proven a sufficient right of priority.
Tacking: The basic issue in the case is whether Apple Inc. can claim priority use back to the founding of Apple Records in 1968 (or sometime before 1984). Of importance, the pre-84 use of Apple mark was solely for “gramophone records” and other record formats. In its registration application, Apple is seeking to register APPLE MUSIC for “15 broad categories of services, from the production and distribution of sound recordings, to presenting live musical performances, to providing websites featuring entertainment and sports information.” Slip Op.
On appeal, the Federal Circuit held that the tacking analysis must be pursued for each service listed its application.
The Board legally erred by permitting Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for one service listed in the application. Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application. A trademark owner must show tacking is available for each good or service for which it claims priority on that ground. . . . The trademark applicant cannot establish absolute priority for the full application simply by proving priority of use for a single service listed in the application.
Slip Op. Here, Apple has not shown that taking is proper for live musical performances and therefore the application must be rejected. On remand, Apple will likely be able to narrow its application to only services that are properly covered by its assignment from Apple Records.
In her analysis, Federal Circuit Chief Judge Moore repeatedly stated that tacking is an exception to the ordinary rule and should be narrowly construed. American courts “uniformly apply the tacking doctrine narrowly.” Although tacking allows for minor changes in services and in the mark itself, tacking requires “substantial identity.” “[G]oods or services must be substantially identical for tacking to apply.” Id. In the context here, in order to have tacking for musical performances “Apple must therefore show live musical performances are substantially identical to gramophone records.” Although substantial identity is a question of fact, the Federal Circuit concluded that there was no need for the TTAB to determine this question — “no reasonable person could conclude … that gramophone records and live musical performances are substantially identical.”
Accordingly, Apple is not entitled to tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ 1968 use of APPLE for gramophone records. Because Apple began using the mark APPLE MUSIC in 2015, Bertini has priority of use for APPLE JAZZ as to live musical performances. We therefore reverse the Board’s dismissal of Bertini’s opposition to Apple’s application to register APPLE MUSIC.
Id.
Note that Apple has substantially moved-on from this issue and redid its logo as shown below using a design-plus-word mark.
Reddit: Anyone can start a subreddit, and back in 2012 Jaime Rogozinski started r/WallStreetBets. Over the years, the site attracted millions of subscribers talking about aggressive trading strategies; providing middle-school humor; and pumping-up various stocks (e.g., GameStop).
In 2020, Reddit removed Rogozinski from his role controlling the subreddit as moderator, concluding that he was “attempting to monetize a community.” Rogozinski had published a book titled WallStreetBets and also filed trademark registration application for the mark WALLSTREETBETS, with him as the owner. Of course, lots of folks are monetizing their subreddits, but I have not heard of others registering a TM on the subreddit name. Immediately after removing Rogozinski from control, Reddit filed competing registration applications for the same mark and continues to control the subreddit. Opposition proceedings are now pending before the TTAB.
Reddit claims control and ownership because the subreddit is on its site and under its control; Rogozinsky argues that he did all the work building the brand for himself – not for Reddit. The issues in this case are interesting because they are similar to those being debated with regard to AI ownership and attribution. Here, the difference is that we have a corporate owner rather than an AI. And, although both the company and Rogozinsky had input in the creation — what really made this valuable is the input and connection to millions of users. Similarly, AI works well only if it has good input data — typically obtained by scooping up and examined up so many copyrighted works and user data.
In addition to the opposition proceedings, Rogozinski has now sued Reddit in Federal Court, asserting infringement of his unregistered WallStreetBets mark; infringement of his registered mark WSB; as well as violations of contract, rights of publicity, and duty of good faith and fair dealing. James R. Lawrence, III is representing the plaintiff.
