IP Law Daily, TRADEMARK—TTAB: Jazz musician fails to show abandonment of APPLE mark, (Mar 22, 2024)

By Deirdre Kennedy, J.D.

Evidence of use of the APPLE mark in connection with other terms and of other marks owned by Apple were circumstantial and did not prove abandonment.

In a non-precedential decision, the Trademark Trial and Appeal Board (Board) denied a petition to cancel Apple Inc.’s trademark "APPLE" on the grounds of abandonment. The petitioner submitted only circumstantial evidence and failed to establish a prime facie case of abandonment (Bertini v. Apple Inc., March 20, 2024, Cataldo, P.).

Apple Inc. owns Registration No. 4088195 for the mark APPLE (in standard characters) on the Principal Register, for a variety of services. Petitioner, Charles Bertini, sought to cancel Apple’s registration on the ground of abandonment through nonuse. Specifically, Bertini alleged that there was no direct association between the standard character mark APPLE and the entertainment services listed on Apple’s website during a period of at least three years and six months after the date of the SOU, namely during November 11, 2011, to May 31, 2015. Apple denied the allegations of the petition to cancel.

A mark is considered abandoned when its use has been discontinued with intent not to resume such use, and nonuse for three consecutive years is prima facie evidence of abandonment. Because registrations are presumed valid, a party seeking cancellation bears the burden of proving a prima facie case of abandonment by a preponderance of the evidence. If the petitioner presents a prima facie case of abandonment, the burden then shifts to the registrant to rebut the prima facie showing with evidence.

Here, Bertini submitted evidence of various Apple websites showing other uses of the APPLE mark such as apple.com, apple.com/apple-music, apple.com/music, apple.com/us/podcasts, apple.com/newsroom, presumably in an attempt to show nonuse of the APPLE mark. Bertini also argued that Apple’s use of APPLE surrounded by other matter, e.g., APPLE STORE, APPLE TV or APPLE MUSIC, showed APPLE as a trade name and not a source identifier.

The Board noted that the addition of a generic or highly descriptive term does not necessarily detract from the commercial impression created by the mark APPLE alone. Apple’s use of APPLE TV, APPLE STORE or APPLE MUSIC all feature the distinctive term APPLE and a generic term, which supports Apple’s use of APPLE in connection with the services identified.

Further, evidence of Apple’s use of APPLE TV, APPLE STORE, or APPLE MUSIC did not indicate that it did not also use APPLE during the relevant time period in connection with the services in question here. Bertini’s evidence of Apple’s use of APPLE as a trade name does not create an inference that Apple did not also use APPLE as a trademark or service mark during the relevant time period.

Finally, the Board was not swayed by Bertini’s arguments that Apple’s use of other marks, such as iTunes, APPLE MUSIC, or APPLE TV to identify its services, was evidence of Apple’s abandonment of its APPLE mark.

The Board found that Bertini essentially submitted examples of websites that display the APPLE mark in connection with other terms, display other marks owned by Apple, or do not display the APPLE mark, and requested that the Board infer that Apple was not using the APPLE mark in connection with the recited services from November 11, 2011, to May 31, 2015. Because the record consisted only of circumstantial evidence of abandonment, Bertini failed to make a prima facie showing of abandonment leading the Board to deny the petition to cancel.

The Case is Cancellation No. 92068213.

Attorneys: James Bertini for Charles Bertini. Joseph Petersen (Kilpatrick Townsend & Stockton LLP) for Apple Inc.

Companies: Apple Inc.

Cases: Trademark USPTO