“These actions by the TTAB demonstrate the appearance of bias in favor of Apple and they violate Bertini’s constitutional rights to Due Process of law.”
Charles Bertini, owner of the trademark APPLE JAZZ, has filed a Request for Reconsideration of a Trademark Trial and Appeal Board (TTAB) Order suspending his Petition to Cancel Apple’s registration of the mark APPLE for entertainment services.
Bertini also filed a motion in October of last year with the U.S. Court of Appeals for the Federal Circuit (CAFC) requesting that he be allowed to present evidence not of record to demonstrate that bias at the TTAB may have had a negative impact on his opposition against Apple, Inc.’s federal registration for “Apple Music”.
The APPLE JAZZ mark was registered in New York state in 1991 for entertainment services. Bertini began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for “Apple Music” in 2016, along with an application to register APPLE JAZZ with the USPTO.
Separately, after Apple used the APPLE mark as a defense in the Opposition, Bertini filed a Petition to Cancel it (Registration No. 4088195) on March 19, 2018, for nonuse/ abandonment, arguing that Apple, Inc. never used the mark in commerce for entertainment services listed in the Registration Certificate.
On February 23, 2021, the TTAB marked the Petition to Cancel “Ready for Decision,” but no decision had been issued as of February 2022. On February 9, 2022, the TTAB issued an order suspending proceedings, stating that it had just come to the Board’s attention that the related Opposition case may affect the outcome of the cancellation petition. However, Bertini is now arguing that the Board was aware of the Opposition in 2018, as the cover sheet on the Opposition filing referenced the related proceeding (Opposition No. 91229891, Serial No. 86659444).
Normally, Petitions to Cancel are are decided approximately ten weeks after trial, according to the USPTO’s website, the Request for Reconsideration notes. However, one year later, no decision has issued and the TTAB’s Order to Suspend is logically flawed, Bertini charges, adding: “These actions by the TTAB demonstrate the appearance of bias in favor of Apple and they violate Bertini’s constitutional rights to Due Process of law.”
While Apple raised the APPLE mark as an affirmative defense in the Opposition, claiming it could tack use of the mark APPLE MUSIC and thereby show a date of first use earlier than that of APPLE JAZZ, “Apple gave up on this defense; it did not argue this defense at all,” the Request for Reconsideration says. The Board also did not rely on the APPLE mark in its Final Decision, instead relying on “an unregistered foreign mark APPLE for production and
distribution of sound recordings.” Bertini continues:
Production and distribution of sound recordings are not listed in the registration certificate of the Mark. The Mark was never owned by Apple Corps. For these reasons, and because Apple abandoned using the Mark as a defense, a decision regarding the Opposition case cannot affect this Cancellation case.
Bertini further charges that the Board’s assertion that a possible settlement in the Opposition could change the outcome of the Cancellation case is “not a lawful basis for suspension” in that “nothing can change the fact that the Mark was not used in commerce, and therefore it must be cancelled according to 15 USC §1064 of the Lanham Act.”
Ultimately, Bertini again accuses the TTAB of the appearance of bias in its failure to decide the case and issue the suspension; asserts that maintaining the APPLE mark on the public register is against public interest, as Apple merely uses the mark as a “weapon”; asks for an “augmented” panel of TTAB judges to decide the present motion and issue a final decision; and claims that the actions of the TTAB have violated his due process rights.
Bertini’s beef with the TTAB echoes complaints that have been made over the years about Patent Trial and Appeal Board (PTAB) panels, particularly in cases involving Apple, as well as research conducted by IPWatchdog regarding the appearance of bias by certain PTAB administrative patent judges (APJs).