Charles Bertiniv.Apple Inc.

Trademark Trial and Appeal Board

Mar 1, 2019

OPP (T.T.A.B. Mar. 1, 2019)

MW
March 1, 2019

Opposition No. 91229891

Charles Bertini

v.
Apple Inc.

Before Wolfson, Kuczma, and Pologeorgis,
Administrative Trademark Judges.

By the Board:

Apple Inc. (“Applicant”) seeks registration of the standard character mark APPLE
MUSIC for the following services in International Class 41:
Arranging, organizing, conducting, and presenting concerts, live musical
performances, entertainment special events in the nature of musical and
cultural events, arts and cultural events, theatrical entertainment in the
nature of live theatrical performances, competitions in the field of
entertainment, contests, fairs for entertainment purposes, musical or film
festivals for cultural or entertainment purposes, and exhibitions for
entertainment purposes; production and distribution of radio programs,
television programs, and sound recordings; entertainment services, namely,
providing ongoing television, radio, audio programs, video programs, podcast,
and webcast programs in the field of entertainment; providing audio and video
programming featuring entertainment, sports, music, information, and news
by means of telecommunications networks; entertainment services, namely,
providing streamed and downloadable audio and video content to users
through a subscription service provided online via a communication network;
provision of live entertainment and recorded entertainment, namely, musical
performances; providing non-downloadable audio and video programming
featuring entertainment, sports, music, informational, and current events
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91229891

2
news programming; providing websites and computer applications featuring
entertainment information, sports information, music information, news in the
fields of music and entertainment, and arts and culture information; providing
websites and computer applications featuring information in the field of
entertainment, music, sports, news in the fields of music and entertainment,
and arts and culture; entertainment services, namely, providing information,
schedules in the nature of concert schedules, reviews and personalized
recommendations of entertainment in the nature of music, arts and cultural
events, concerts, live musical and cultural performances, competitions in the
field of entertainment, fairs for entertainment purposes, music or film festivals
for cultural or entertainment purposes, and exhibitions for entertainment
purposes; ticket reservation and booking services for entertainment, arts and
cultural events, concerts, live musical performances, competitions in the field
of entertainment, fairs for entertainment purposes, music or film festivals for
entertainment purposes, and exhibitions for entertainment purposes;
entertainment services, namely, providing reviews, entertainment surveys,
and ratings, and providing interactive websites and computer applications for
entertainment purposes for the posting and sharing of reviews, entertainment
surveys, and ratings of users all relating to entertainment, art and cultural
events, concerts, live musical performances, competitions in the field of
entertainment, entertainment fairs, music or film festivals for cultural or
entertainment purposes, and exhibitions for entertainment purposes;
providing non-downloadable ringtones, pre-recorded music, video programs,
and graphics for use on mobile communications devices via a global computer
network and wireless networks; providing a website for the uploading, storing,
sharing, viewing and posting of images, audio, videos, online journals, blogs,
podcasts, and multimedia content; publication of books, periodicals,
newspapers, newsletters, manuals, blogs, journals, and articles, all in the
fields of music and entertainment; providing websites featuring non-
downloadable publications in the nature of books, periodicals, newspapers,
newsletters, manuals, blogs, journals, and articles, all in the fields of music
and entertainment; news reporting in the field of music and entertainment.1

On September 2, 2016, Charles Bertini (“Opposer”) filed a notice of opposition to
registration of the subject mark on the grounds of likelihood of confusion based on his
alleged prior common law use of the mark APPLE JAZZ for entertainment services,

1 Application Serial No. 86659444 was filed on June 11, 2015 based on Applicant’s bona fide
intention to use the mark in commerce under Trademark Act Sections 1(b) and 44(d), 15
U.S.C. §§ 1051(b) and 1126(d). Applicant claims a priority filing date under Section 44(d)
based on an application filed in Jamaica on May 18, 2015. The application includes a
disclaimer of the wording “MUSIC” apart from the mark as shown.
Opposition No. 91229891

3
including “live musical performances.”2 Applicant, in its answer, denies the salient
allegations in the notice of opposition, and asserts an “affirmative defense” that
because it is the owner of three registrations with prior dates of use for the mark
APPLE for various goods and services in the music and entertainment fields, it has
priority of use in this case.
This case now comes up for consideration of Opposer’s motion (filed September 18,
2018) for summary judgment on its claim of likelihood confusion. The motion is fully
briefed.
I. The Pleadings
As an initial matter, we have reviewed the operative pleadings in the case to
determine if the parties’ claims and defenses are sufficiently pleaded. See Asian and
Western Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009). After
careful review, we find that the notice of opposition contains allegations that, if
proven, would establish Opposer’s standing, as well as his asserted claim of likelihood
of confusion.
In its answer, Applicant asserts an affirmative defense that, based on its
ownership of Registration Nos. 2034964, 3317089, and 4088195 for the standard
character mark APPLE, it “owns trademark rights in the mark in the field of music,
musical performances, and musical, cultural and entertainment events that predate

2 Opposer also pleads ownership of pending application Serial No. 87060640 for the standard
character mark APPLE JAZZ, with a disclaimer of the term “JAZZ,” for a variety of
entertainment services in International Class 41. The application is based on use of the mark
in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and includes a claim of
use of the mark anywhere and use of the mark in commerce since June 5, 1985.
Opposition No. 91229891

4
those of Opposer.” 9 TTABVUE 4-5. Applicant has not introduced copies of the prior
registrations into the proceeding record. See Trademark Rule 2.122(d), 37 C.F.R. §
2.122(d). However, Applicant asserts that the dates of first use and first use in
commerce claimed in Registrations Nos. 2034964 and 4088195 predate Opposer’s
claimed date of first use in commerce for its pleaded mark.3 We find Applicant’s
assertion of prior use, based on its claim to the dates of use in the registrations of its
APPLE mark, as asserting an affirmative defense to Opposer’s alleged priority of use
sufficient to provide Opposer proper notice of the “tacking” defense. See The H.D. Lee
Co., Inc. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 (TTAB 2008).4
II. Standing
Standing is a threshold issue that must be pleaded and proven by the plaintiff in
every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 171 F.3d. 1092,

3 Applicant claims that Registration No. 2034964 includes a date of first use at least as early
as August 1968 for “gramophone records featuring music; pre-recorded audio tape cassettes
featuring music; audio compact discs featuring music; pre-recorded video tape cassettes
featuring music.” 9 TTABVUE 4. Registration No. 2034964 issued February 4, 1997.
Applicant claims that Registration No. 4088195 includes a date of first use in commerce at
least as early as March 1, 1981 for the following services, inter alia:
Digital video, audio and multimedia publishing services; providing entertainment
information regarding movies, music, videos, television, sports, news, history, science,
politics, comedy, children’s entertainment, animation, culture, and current events;
entertainment services, namely production of live musical performances;
entertainment services, namely, providing live musical performances online via a
global computer network; and entertainment services, namely, providing prerecorded
audio and audiovisual content, information and commentary in the fields of music,
concerts, videos, movies, television, books, news, sports, games and cultural events all
via a global computer network.
Id. at 5. Registration No. 4088195 issued January 17, 2012.
4 Applicant does not assert any priority date with respect to Registration No. 3317089. Thus,
that registration does not support Applicant’s defense.
Opposition No. 91229891

5
50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). Thus, to prevail on summary judgment,
Opposer must not only establish a valid ground for opposition, but must also prove
his standing. See Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007).
In this case, Opposer has established his standing by submitting, with his motion, a
copy of his pleaded application for the mark APPLE JAZZ and the Office Action citing
Applicant’s application and prior registrations as a potential bar to registration of
Opposer’s mark based on likelihood of confusion.5 See, e.g., Weatherford/Lamb Inc. v.
C&J Energy Serv. Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (finding standing on
basis of plaintiff’s making of record the USPTO Office action suspending plaintiff’s
pending application pending possible refusal based on alleged likelihood of confusion
with defendant’s registration).
III. Relevant Arguments and Evidence
Turning to the parties’ arguments on summary judgment, we note initially that
Applicant “does not dispute the likelihood of confusion between Opposer’s APPLE
JAZZ mark and [Applicant’s] APPLE marks.” 40 TTABVUE 9. Applicant concedes
that this proceeding is “a priority contest.” Id. Thus, we find as a matter of law that
there is no genuine dispute of material fact that a likelihood of confusion exists
between the parties’ respective marks.
Opposer asserts that he has been using his mark in commerce in connection with
entertainment services featuring jazz music since at least as early as June 5, 1985
and, thus, he has priority over the June 11, 2015 filing date of the involved

5 37 TTABVUE 46-51 (Exhibit 132), 150-53.
Opposition No. 91229891

6
application. 36 TTABVUE 15-16. In addition, Opposer argues that he has priority of
use over the June 26, 1995 filing date of Registration No. 2034964 and the September
28, 2007 priority date of Registration No. 4088195.
Opposer also argues that Applicant did not use its APPLE mark in commerce prior
to Opposer’s first use date because Applicant did not produce any documents relating
to use of this mark by its predecessor-in-interest.6 Opposer notes that he has filed a
petition to cancel Applicant’s Registration No. 4088195.
In addition to his signed declaration attesting to his continuous use in commerce
since 1985,7 Opposer has submitted copies of numerous advertisements, third-party
articles, and other documents showing the mark APPLE JAZZ used in connection
with a jazz band and jazz festivals.8
In response to the motion, Applicant claims that it “was the first party to use the
APPLE mark in commerce, a half century ago, and [it] has made continuous use of
the APPLE mark in commerce since that time to identify its musical recordings –

6 Opposer also asserts several arguments regarding the specimens in Applicant’s prior
registrations. We note, however, that the specimens are not relevant to whether Applicant
can show use in commerce prior to Opposer’s date of first use. See, e.g., Baseball America,
Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844, 1848 n.10 (TTAB 2004) (dates of use and
specimen in registration not evidence); Osage Oil & Transportation, Inc. v. Standard Oil Co.,
226 USPQ 905, 906 n.4 (TTAB 1985) (statements and materials in registration file bearing
on respondent’s dates of use not evidence). In addition, Opposer’s arguments regarding the
Office’s decision to approve third-party registrations for services in Class 41 are not relevant
to the issues in this proceeding. It is well-settled that prior decisions by examining attorneys
in approving other marks have no evidentiary value and are not binding on the Board. In re
Davey Prods. Pty, 92 USPQ2d 1198, 1206 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1871
(TTAB 2001).
7 Charles Bertini Decl. at ¶¶ 2-10, 36 TTABVUE 24-25.
8 36 TTABVUE 54-104 (Exhibits 1-51).
Opposition No. 91229891

7
whether in the form of gramaphone records, as in the early Apple Corps days, or on
prerecorded audio tape cassettes, prerecorded video tape cassettes, or audio compact
discs.” 40 TTABVUE 13. As two of the registrations state dates of use that predate
Opposer’s claimed date of first use, Applicant “seeks to tack its earlier registered uses
of APPLE onto the constructive use date” for the involved application for APPLE
MUSIC. Id. at 15. In support of its asserted tacking defense, Applicant argues that
(1) the distinct portion of the APPLE MUSIC mark is identical to the mark in its prior
registrations; (2) consumers are likely to focus on the “APPLE” component of the
mark because it is among the most famous marks in the world; and (3) the goods and
services in the involved application and prior registrations are substantially
equivalent. Id. Based on the foregoing, Applicant argues that, at a minimum, its
tacking defense raises a genuine dispute of material fact for trial.
In support of its tacking defense, Applicant has submitted the declaration of
Jeffrey Vaughan Jones, Chief Executive Office of Apple Corps Limited, Applicant’s
predecessor-in-interest, attesting to Apple Corps Limited’s use of the mark APPLE
in the music and film business since the 1960’s and the assignment of the mark to
Applicant. 41 TTABVUE 2-3. In addition, Mr. Jones introduces exhibits
demonstrating use of the mark APPLE by Apple Corps Limited. The exhibits include
copies of records, record sleeves for music recordings, and films on DVD. Id. at 14-
259.
Opposition No. 91229891

8
IV. Opposer’s Objections
Prior to addressing the merits of the motion for summary judgment, we consider
the objections raised in Opposer’s reply brief. Opposer objects to the following
arguments in Applicant’s response on the grounds that they were not properly
pleaded as affirmative defenses: (1) that Opposer’s mark is not a protectable mark;
(2) that Opposer lacks proprietary rights in its mark; and (3) that Applicant has
priority through tacking. 43 TTABVUE 4.9
Opposer also objects to the declaration of Jeffrey Vaughan Jones on the grounds
that the witness was not disclosed in Applicant’s initial disclosures. In addition,
Opposer objects to the substance of Mr. Jones’ declaration on the grounds that the
statements therein are legal conclusions that are unsupported by evidence. Finally,
Opposer objects to the exhibits introduced in connection with the declaration because
none of the documents contain Bates numbers and “consequently Opposer believes
they have not been previously disclosed.” 43 TTABVUE 7.
A. Arguments not Pleaded as Defenses
With respect to Opposer’s first objection, we note that Applicant argues that
Opposer has failed carry his burden to establish that his pleaded mark is inherently

9 Opposer also asserts that Applicant’s dispute of Opposer’s alleged date of first use is an
affirmative defense that must be pleaded. 43 TTABVUE 4. This assertion is incorrect.
Because Opposer bears the burden of establishing priority in the opposition proceeding,
Applicant’s denial of the allegation in its answer is sufficient to put Opposer on notice that it
disputes Opposer’s date of first use. Media Online Inc. v. El Clasificado Inc., 88 USPQ2d
1285, 1287 (TTAB 2008) (respondent not precluded from moving for judgment on the
pleadings on the issue of priority, despite its failure to assert priority as an affirmative
defense because priority is a required element of petitioner’s Trademark Act § 2(d) claim).
Further, the date of first use must be established at trial or on summary judgment by
competent evidence. Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2).
Opposition No. 91229891

9
distinctive or has acquired distinctiveness “in the first instance.” 40 TTABVUE 23.10
To the extent Applicant contends that Opposer lacks proprietary rights in his pleaded
mark because the mark is merely descriptive, the argument must be raised as an
affirmative defense in Applicant’s pleading. See Chicago Corp. v. North Am. Chicago
Corp., 20 USPQ2d 1715, 1717 n.5 (TTAB 1991) (defense raised for first time in final
brief that opposer lacks proprietary rights in its common law mark was neither
pleaded nor tried); see also Perma Ceram Enters. Inc. v. Preco Indus. Ltd., 23 USPQ2d
1134, 1139 (TTAB 1992) (in defending against Section 2(d) claim that opposer’s
unregistered mark is merely descriptive, applicant was advised to amend pleading to
affirmatively assert priority of acquired distinctiveness); cf. Nat’l Aeronautics &
Space Admin. v. Bully Hill Vineyards Inc., 3 USPQ2d 1671, 1671 (TTAB 1987)
(genericness of opposer’s pleaded mark asserted as an affirmative defense). Because
Applicant has not pleaded a defense that Opposer’s mark is not distinctive and has
failed to acquire distinctiveness, we have given the arguments no consideration on
summary judgment. See Chicago Corp., 20 USPQ2d at 1717 n.5; cf. Ceram Enters. v.
Preco Indust. Ltd., 23 USPQ2d 1134, 1135 n.2 (TTAB 1992) (no consideration given

10 Applicant also argues that Opposer failed to introduce any evidence that his mark is
inherently distinctive or that it has acquired secondary meaning as applied to Opposer’s
services; thus, a genuine dispute remains as to whether Opposer’s mark is protectable. Id. at
23-25. Applicant’s argument that Opposer bears the initial burden of establishing that his
pleaded mark is inherently distinctive or has acquired distinctiveness is misplaced. While
Opposer must establish his prior proprietary rights, such as through a showing of prior
common law use, Applicant must raise the distinctiveness of Opposer’s mark as an issue in
this proceeding so as to put Opposer on notice of this defense. See Giersch v. Scripps Networks
Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (in absence of pleaded registration, petitioner must
show prior common law use).
Opposition No. 91229891

10
to unpleaded grounds asserted by opposer in response to applicant’s motion for
summary judgment).
In addition, Applicant argues that there is a genuine dispute of material fact
regarding whether Opposer is the owner of the pleaded mark APPLE JAZZ, or
Opposer and the other members of the band jointly own rights in the mark. Applicant
contends that the evidence of record indicates that “the band as a whole controls
the nature and quality of the services rendered under that mark.” Id. at 22-23
(emphasis in original). Because Applicant has failed to plead that Opposer is not the
owner of its pleaded mark, we have given the argument no consideration on summary
judgment. See Chicago Corp., 20 USPQ2d at 1717 n.5.
With respect to Applicant’s claim of priority through tacking, as noted above, we
find that Applicant’s assertion in its answer that it owns two registrations in the
mark APPLE with dates of first use that “predate the dates of first use and first use
in commerce claimed by Opposer,” 5 TTABVUE 5, is sufficient to give Opposer fair
notice that Applicant intends to rely on the registered marks to prove priority through
tacking.
B. Declaration of Jeffrey Vaughan Jones
Opposer objects to Applicant’s submission of the declaration of Jeffrey Vaughan
Jones because the witness was not disclosed in its initial disclosures in accordance
with Fed. R. Civ. P. 26(a) and (e).11 Under Rule 26(a)(1), each party must identify, in

11 With its reply brief, Opposer submitted a copy of Applicant’s initial disclosures. 43
TTABVUE 49.
Opposition No. 91229891

11
its initial disclosures, each individual likely to have discoverable information that the
disclosing party may use to support its claims or defenses.12 A party who fails to
timely identify a witness that the disclosing party may use to support its claims or
defenses in its initial or pretrial disclosures is precluded from using the testimony of
the witness unless its failure was “substantially justified or harmless.” Fed. R. Civ.
P. 37(c)(1); see also Spier Wines (PTY) Ltd. v. Shepherd, 105 USPQ2d 1239, 1246
(TTAB 2012). However, initial disclosures do not obligate a party to disclose the name
of every witness, document or thing that may have or contain discoverable
information about its claim or defenses; only those which may have information that
the disclosing party may use to support its claims or defenses. See TBMP § 401.02;
Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326 (TTAB 2011).
In this case, because Applicant knew that it intended to rely on prior use by its
predecessor-in-interest at the time it filed its answer, Applicant should have
identified Mr. Jones in its initial disclosures as an individual likely to have
discoverable information. See Great Seats, 100 USPQ2d at 1326 n. 5 (“if the identity
of the witness is known when initial disclosures are made, and the relevant
knowledge of the witness is known, then a party may have to disclose the identity of
the witness when making initial disclosures.”). However, considering the importance
of the information Mr. Jones provides in supporting Applicant’s argument that it
purportedly has prior rights in its other marks, we find that precluding Applicant

12 Rule 26(a)(1) of the Federal Rules relating to required disclosures is made applicable to
Board proceedings by Trademark Rule 2.120(a)(1), 37 C.F.R. § 2.120(a)(1).
Opposition No. 91229891

12
from relying on Mr. Jones’ declaration to support its defense, under the
circumstances, would be an unduly harsh sanction. See, e.g., Vignette Corp. v. Marino,
77 USPQ2d 1408, 1411 (TTAB 2011) (Board declined to preclude information in
declaration submitted in response to summary judgment motion despite applicant’s
failure to disclose the information during discovery); Great Seats, 100 USPQ2d at
1327 (declining to exclude testimony depositions based on opposer’s failure to name
them in initial disclosures); cf. Presto Prods. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895,
1896 n.5 (TTAB 1988) (finding party could not introduce information on summary
judgment affirmatively withheld during discovery; evidence was not determinative).
Accordingly, Opposer’s objection to the declaration under Rule 37(c)(1) is overruled.
We have considered the declaration of Mr. Jones for purposes of the summary
judgment motion.13
With respect to Opposer’s objections, on multiple grounds, to the substance of Mr.
Jones’ declaration, the objections are also overruled. However, the Board will consider
the objections in evaluating the probative value of the declaration. See Tao Licensing,
LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1047 (TTAB 2017) (objections
overruled, but Board will weigh the relevance and strength or weakness of the
objected-to testimony, including any inherent limitations); Krause v. Krause Publ’n

13 In the interest of fairness, as noted infra, discovery will be reopened for Opposer for the
sole purpose of allowing Opposer to take a discovery deposition of Mr. Jones.
Opposition No. 91229891

13
Inc., 76 USPQ2d 1904, 1907 (TTAB 2005) (Board considers substantive objections in
evaluating probative value of testimony at final hearing).14
C. Documents Attached to Jones Declaration
Regarding the documents introduced as exhibits to Mr. Jones’ declaration,
Opposer merely states that the documents do not contain Bates numbers; thus,
“Opposer believes they have not been previously disclosed.” 43 TTABVUE 7. Because
Opposer does not affirmatively state that the exhibits were not previously disclosed,
or that Applicant unequivocally refused to provide the information in response to a
particular discovery request, the Board will not preclude the exhibits under Rule
37(c)(1) from consideration on summary judgment. Midwestern Pet Foods Inc. v.
Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir.
2012); Vignette Corp. v. Marino, 77 USPQ2d at 1411. Accordingly, the objection to
those documents is overruled.
V. Summary Judgment
Summary judgment is a pretrial device to dispose of cases in which “the movant
shows there is no genuine dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a). In reviewing a motion for
summary judgment, the evidentiary record and all justifiable inferences to be drawn
from the undisputed facts must be viewed in the light most favorable to the non-
moving party. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027, 2029-30 (Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,

14 Applicant is reminded of its continuing obligation to supplement its initial disclosures and
discovery responses or correct its responses in a timely manner under Fed. R. Civ. P. 26(e).
Opposition No. 91229891

14
22 USPQ2d 1542, 1546 (Fed. Cir. 1992). We may not resolve disputes of material fact;
we may only ascertain whether a genuine dispute regarding a material fact exists.
See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
A party moving for summary judgment has the burden of demonstrating a
particular fact is not disputed by citing to the record, including affidavits or
declarations, admissions or interrogatory answers; or showing that the cited
materials do not establish the absence or presence of a genuine dispute, or that the
adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P.
56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). When the
moving party has supported its motion with sufficient evidence that, if unopposed,
indicates there is no genuine dispute of material fact, the burden of production shifts
to the non-moving party to demonstrate the existence of a genuine dispute of material
fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537,
1540 (TTAB 2009).
Here, Opposer has carried his burden to demonstrate use of his mark in commerce
prior to the filing date of the involved application. Applicant, however, relies on its
tacking defense to demonstrate that a genuine dispute of material fact remains on
the issue of priority.15 A party may benefit from the use of an earlier form of its mark
to establish priority if the old form and the new form are “legal equivalents” and
“create the same continuing commercial impression.” Van Dyne-Crotty, Inc. v. Wear-

15 As noted above, because Applicant failed to properly plead any of the other defenses in its
answer, we have not considered them.
Opposition No. 91229891

15
Guard Corp., 17 USPQ2d 1866, 1869, 926 F.2d 1156 (Fed. Cir. 1991), abrogated on
other grounds by Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 909 (2015). It follows
then that “the tacking of the use of a mark for certain goods or services onto the use
of the same mark for other goods or services … should be permitted only when the
two sets of goods or services are ‘substantially identical.’” Big Blue Prods. Inc. v. Int’l
Bus. Machines Corp., 19 USPQ2d 1072, 1075 (TTAB 1991).
Based on the record herein and the applicable law, we find that, at minimum,
genuine disputes of material fact remain with respect to priority of use. In particular,
genuine disputes of material fact exist as to (1) whether the goods and services with
which Applicant previously used its APPLE mark are substantially identical to the
services in the involved application;16 and (2) Applicant’s actual dates of first use of
the marks subject to the prior registrations that form the basis of its “tacking
defense.”17 Moreover, as noted supra, Applicant did not introduce status and title
copies of its claimed prior registrations into the record and, therefore, has not
provided evidence to support its tacking affirmative defense as it relates to these prior
registrations.

16 The fact that we have identified particular genuine disputes as to a material fact should
not be construed as a finding that these are necessarily the only disputes which remain for
trial. In addition, the parties should note that, absent an agreement between the parties,
evidence submitted in connection with a motion for summary judgment or opposition thereto
is of record only for consideration of that motion. Any such evidence to be considered at final
hearing must be properly introduced in evidence during the appropriate trial period. See Levi
Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
17 We note that Applicant’s dates of use in the claimed registrations are not evidence of
Applicant’s use. Applicant must establish priority of use through competent evidence of use.
Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2); see also See UMG Recordings, Inc. v.
O'Rourke, 92 USPQ2d 1042, 1047 (TTAB 2009).
Opposition No. 91229891

16
In view of the foregoing and because Applicant does not dispute the likelihood of
confusion between the parties’ marks, Opposer’s motion for summary judgment is
granted, in part, with respect to the issue of likelihood of confusion, and denied, in
part, with respect the issue of priority of use.
VI. Accelerated Case Resolution
In view of the limited issues remaining for trial, the Board strongly recommends
that the parties consider resolution of this proceeding by means of Accelerated Case
Resolution (“ACR”). In ACR cases, parties generally stipulate to relaxation of the
Board’s rules in order to streamline discovery and testimony. If the parties so desire,
they could avoid a formal trial altogether and, for example, stipulate that any or all
of the summary judgment evidence be treated as properly of record for purposes of
final decision. Moreover, the parties may stipulate that the summary judgment
motion and evidence be treated as the final record and briefs in the case, alternately
with supplemental evidence and briefing. Although the Board may not decide
disputed issues of fact when considering a motion for summary judgment, the parties
may stipulate in an ACR proceeding that the Board may resolve genuine disputes of
fact it may find to exist. If the parties agree to ACR, they could realize a very
significant savings in time18 and cost. More information about the Board’s ACR
options can be found on the Board’s website.19 See also TBMP § 528.05(a)(2) and

18 Because ACR records are usually more compact than those presented on formal testimony
and notices of reliance, the Board can usually render a final decision more quickly.
19 See http://www.uspto.gov/trademarks/process/appeal/index.jsp.
Opposition No. 91229891

17
§ 705, and authorities cited therein. If the parties have questions about their ACR
options, they are urged to contact the assigned interlocutory attorney.
Notwithstanding the foregoing, the Board will not entertain any further motions
for summary judgment in this proceeding.
VII. Proceedings Resumed
Proceedings herein are resumed. As noted above, discovery is reopened for the sole
purpose of allowing Opposer to take the discovery deposition of Mr. Jones. Opposer is
allowed until THIRTY DAYS from the mailing date of this order in which to notice
and take the discovery deposition of Mr. Jones, if necessary. The Board expects the
parties to cooperate in arranging the discovery deposition of Mr. Jones. Discovery is
otherwise closed.
The remaining proceeding dates are reset as follows:
Plaintiff's Pretrial Disclosures Due 4/30/2019
Plaintiff's 30-day Trial Period Ends 6/14/2019
Defendant's Pretrial Disclosures Due 6/29/2019
Defendant's 30-day Trial Period Ends 8/13/2019
Plaintiff's Rebuttal Disclosures Due 8/28/2019
Plaintiff's 15-day Rebuttal Period Ends 9/27/2019
Plaintiff's Opening Brief Due 11/26/2019
Defendant's Brief Due 12/26/2019
Plaintiff's Reply Brief Due 1/10/2020
Request for Oral Hearing (optional) Due 1/20/2020

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
Opposition No. 91229891

18
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in
evidence, the manner and timing of taking testimony, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).