Charles Bertiniv.Apple Inc.

Trademark Trial and Appeal Board

Aug 9, 2021

91229891RE (T.T.A.B. Aug. 9, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: November 5, 2020 Mailed: August 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Charles Bertini
v.
Apple, Inc.
_____

Opposition No. 91229891
_____

On Request for Reconsideration
_____

James Bertini, for Charles Bertini.
Joseph Petersen of Kilpatrick Townsend & Stockton LLP, for Apple, Inc.
_____

Before Shaw, Kuczma and Hudis,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
I. Background
Opposer, Charles Bertini, filed a timely request for reconsideration of the Board’s
decision dated April 16, 2021, dismissing the opposition. Applicant filed a brief in
response to the request for reconsideration, and Opposer filed a reply brief.1 Although
Trademark Rule 2.129(c), 37 C.F.R. § 2.129(c), makes no provision for the filing of a
reply brief on a request for reconsideration of a decision issued after final hearing, we

1 102-104 TTABVUE.
Opposition No. 91229891
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exercise our discretion and consider the brief. See, e.g., Kappa Books Inc. v. Herbko
Int’l Inc., 60 USPQ2d 1765, 1766 n.2 (TTAB 2001), rev’d on other grounds, 308 F.3d
1156, 64 USPQ2d 1375 (Fed. Cir. 2002).
The premise underlying a request for reconsideration under Trademark Rule
2.129(c) is that, based on the evidence of record and the prevailing authorities, the
Board erred in reaching the decision it issued. It is not to be a reargument of the
points presented in the movant’s brief on the case, nor is it to be used to raise new
arguments or introduce additional evidence. Rather, the request should be limited to
a demonstration that based on the facts before it and the applicable law, the Board’s
decision is in error and requires appropriate change. See TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE § 543 (June 2021) and cases cited therein.
II. Analysis
Opposer maintains that his opposition to Application Serial No. 86659444 should
be sustained on the ground of priority and likelihood of confusion under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d). We disagree and address each of Opposer’s
arguments in turn.
A. The Jones testimony
Opposer first argues that the “Board disregarded Opposer’s objections about the
continuity of use [of the] APPLE mark for products[.]”2 In particular, Opposer objects
to the testimony of Jeffrey Vaughan Jones, CEO of Apple Corps Limited, on the
grounds that it was contradicted by Opposer’s objections and that it was “indefinite

2 Opposer’s Request for Reconsideration, p. 3, 102 TTABVUE 4.
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and internally inconsistent.”3 Opposer objected to images of record albums and other
musical recordings discussed by Mr. Jones because some of the images were taken
from the internet.
We disagree with Opposer’s objection that the evidence is unreliable merely
because it was taken from the internet. Jones authenticated the images as being
representative of Apple Corps products sold during the time periods in question. The
mere fact that the images were taken from the internet does not diminish their
evidentiary value where, as here, they have been authenticated by a credible witness.
See Spiritline Cruises LLC v. Tour Mgmt. Services, Inc., 2020 USPQ2d 48324, at *4
(TTAB 2020) (Opposer used appropriate witness testimony to authenticate internet
documents and lay the foundation to support the intended evidentiary use).
Regarding Opposer’s allegation that Jones’ testimony is “indefinite and internally
inconsistent,” we disagree with this characterization as well. The Board’s decision
recognized that Jones’ testimony was lacking in the “type or quantity of documentary
evidence that one would expect to be readily available” for such famous recordings.4
Nevertheless, based on the entirety of the record, we found that “[t]he record provides
no sufficient reason for us to disregard or discount Jones’ testimony on Apple Corps’
use of the mark going back to 1968.”5 Opposer’s quibbles with some of Jones’ wording
and gaps in his knowledge regarding precise dates of distribution do not undermine
or rebut Jones’ testimony. As we noted in our decision, “Opposer was free to

3 Id. at 21, 102 TTABVUE 22.
4 Opinion of April 16, 2021, p. 46, 101 TTABVUE 46.
5 Id.
Opposition No. 91229891
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cross-examine Jones regarding Apple Corps’ and records if he was dissatisfied with
Jones’ declaration. Opposer chose not to do so.”6 Opposer will not now be heard to
complain about testimony he chose not to address.
B. Pleading of Applicant’s tacking defense
Opposer next argues that Applicant failed to establish its tacking defense because
it failed to plead that the term MUSIC in the mark APPLE MUSIC is generic for
Applicant’s music-related services. According to Opposer, “[t]he genericness of a
portion of the APPLE MUSIC mark, the term ‘music’, is not listed in the Applicant’s
defenses[.]”7 We disagree that Applicant failed to plead and establish its tacking
defense.
The defense of tacking requires that the earlier-used mark and the later-used
mark be “legal equivalents.” Marks are legally equivalent if they create “‘the same,
continuing commercial impression’ and the later mark [does] not materially differ
from or alter the character of the mark attempted to be ‘tacked,’” thereby causing
“consumer[s] [to] consider both as the same mark.” Van Dyne-Crotty, Inc. v. Wear-
Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991) (citation omitted).
Applicant’s answer asserted the defense of tacking by claiming “trademark rights
in the mark APPLE in the field of music, musical performances, and musical, cultural
and entertainment events that predate those of Opposer[.]”8 In addition, the Board’s
subsequent grant of partial summary judgment found that Applicant had properly

6 Id. at 11-12, 101 TTABVUE 11-12.
7 Opposer’s Request for Reconsideration, p. 3, 102 TTABVUE 4.
8 Applicant’s Answer, p. 3, 9 TTABVUE 4.
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pleaded the defense of tacking. The Order stated: “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.”9 In fact, the
Board’s order summarized Applicant’s argument that the APPLE element of its mark
was more distinct than the MUSIC element:
(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.10
Thus, Opposer was on notice that the issue of the distinctiveness, or lack thereof,
of the term MUSIC was at issue with regard to the tacking defense. It was not
necessary that Applicant define the precise degree of descriptiveness of the term
MUSIC in APPLE MUSIC. Rather, it is sufficient that Opposer was on notice that
Applicant intended to rely on the APPLE element to establish tacking. See Ohio State
Univ. v. Ohio Univ., 51 USPQ2d 1289, 1292 (TTAB 1999) (primary purpose of
pleadings “is to give fair notice of the claims or defenses asserted”).
C. Whether MUSIC is generic in reference to Applicant’s goods and services
Opposer argues the Board’s finding that the term MUSIC in APPLE MUSIC is
generic when used in connection with Applicant’s musical sound recordings and the
production and distribution of musical sound recordings “is not based on substantial

9 Board’s order granting partial summary judgment, p. 4, 45 TTABVUE 4.
10 Id. at 7, 45 TTABVUE 7.
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evidence.”11 According to Opposer, “[t]o convince the Board that the term “music” is
generic, Applicant totally relies on the fact of disclaiming [sic] term ‘music’ in its
application to the USPTO.”12 Opposer is simply wrong.
The record includes ample evidence to support the Board’s finding that MUSIC is
generic for Applicant’s musical sound recordings and the production and distribution
of musical sound recordings. Applicant submitted a dictionary definition of the term
“music” which defines the term as, inter alia, “vocal, instrumental, or mechanical
sounds having rhythm, melody, or harmony.”13 Applicant also introduced more than
twenty-five third-party registrations for marks incorporating the term MUSIC for
various goods and services relating to music.14 All of these registrations—
encompassing goods such as musical recordings or services such as music recording,
production, distribution, streaming, and the like—disclaim the term MUSIC. In
addition, Applicant has disclaimed MUSIC in a number of its other APPLE MUSIC
registrations.15
The definition and third-party registrations support the finding that MUSIC is
generic when used in connection with Applicant’s goods and services. See Juice

11 Opposer’s request for reconsideration, p. 10, 102 TTABVUE 11.
12 Id.
13 Applicant’s sixth notice of reliance, https://www.merriam-webster.com/dictionary/music, 74
TTABVUE 241-44.
14 Applicant’s fourth notice of reliance, exhs. 50-77, 70 TTABVUE 200-78.
In its request for reconsideration, Opposer identified for the first time a number of third-
party registrations containing the term MUSIC which purportedly registered without a
disclaimer. 102 TTABVUE 12. These registrations are manifestly untimely and have not been
considered. Hole In 1 Drinks, Inc. v. Michael Lajtay, 2020 USPQ2d 10020, at *2 (TTAB 2020)
(exhibits attached to brief not considered).
15 Applicant’s fourth notice of reliance, exhs. 11-13, 70 TTABVUE 69-77.
Opposition No. 91229891
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Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir.
2015). (third-party registrations alone may be relevant, in the manner of dictionary
definitions, “to prove that some segment of the [marks] has a normally understood
and well recognized descriptive or suggestive meaning, leading to the conclusion that
that segment is relatively weak.”) (internal quotation marks omitted).
Moreover, a disclaimer is an admission that a term is at least descriptive. Quaker
State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363
(CCPA 1972) (disclaimer is an admission of descriptiveness at the time the disclaimer
was made). See also TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1213.03(b)
(July 2021) (“If a mark is comprised in part of matter that, as applied to the goods or
services, is generic or does not function as a mark, the matter must be disclaimed to
permit registration on the Principal Register[.]”).
Opposer nevertheless argues that “[t]he Board didn’t give any consideration to the
fact that “music” is only suggestive for the Services whereas Opposer disputed the
alleged genericness of term “music” stating that it only suggests the Services.”16 We
find Opposer’s argument strains credulity. It takes no great leap of deduction to find
that MUSIC is generic when used in connection with musical sound recordings and
the production and distribution of musical sound recordings. Indeed, virtually the
entire record before us supports the determination that MUSIC is generic for
Applicant’s musical sound recordings and the production and distribution of musical
sound recordings.

16 Opposer’s request for reconsideration, p. 4, 102 TTABVUE 4.
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We have long held that terms which refer to the content of a particular media are
generic for goods or services containing or providing that content. See In re Recorded
Books Inc., 42 USPQ2d 1275, (TTAB 1997) (RECORDED BOOKS generic for pre-
recorded audio tape cassettes featuring literary works); In re Harcourt Brace
Jovanovich, Inc., 222 USPQ 821 (TTAB 1984) (LAW & BUSINESS generic for
arranging and conducting business law seminars, being no more than a designation
of the subject matter of these seminars); In re Conus Commc’ns Co., 23 USPQ2d 1717
(TTAB 1992) (ALL NEWS CHANNEL generic for television broadcasting services);
In re Hotels.com, L.P., 87 USPQ2d 1100, 2008 WL 779325 (TTAB 2008), decision aff’d,
573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for hotel
reservation web service); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d
1378 (Fed. Cir. 2007) (LAWYERS.COM generic for web site providing access to and
information about lawyers); see also Kegan v. Apple Comput., Inc., 42 USPQ2d 1053
(N.D. Ill. 1996) (GUIDE is generic for publications).
Here, MUSIC is at least as generic as any of the terms used to refer to content in
the cases discussed above, if not more so. Music is the sine qua non of musical sound
recordings and the production and distribution of musical sound recordings. Simply
put, consumers do not just buy physical sound recordings, they buy music. The format
of the music has changed over time—from phonographs, to cassettes, to CD’s, and
now to digital streaming—but the music stays the same, and that is what consumers
are buying. Accordingly, we find no error in the Board’s determination that the term
MUSIC in the mark APPLE MUSIC is generic for musical sound recordings and the
production and distribution of musical sound recordings.
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D. Whether APPLE and APPLE MUSIC create the same, continuing commercial
impression
In light of the Board’s finding that MUSIC is generic for Applicant’s goods and
services, it also was not error to find that APPLE and APPLE MUSIC create the
same, continuing commercial impression. As we noted in the decision, the U.S. Court
of Appeals for the Federal Circuit, has stated that “[t]acking is occasionally permitted
where the two marks, though differing slightly in their literal meaning or
grammatical presentation, nevertheless possess the same connotation in context.”
Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1869
(Fed. Cir. 1991). Such is the case here.
When used in connection with Applicant’s goods and services, both APPLE and
APPLE MUSIC create the same commercial impression: an entity named APPLE
that is the source of musical sound recordings. Opposer nevertheless argues that
“Applicant’s customers regard APPLE and APPLE MUSIC as different marks.
APPLE and APPLE MUSIC are not confusingly similar and therefore not legal
equivalents, because ‘[p]urchasers seeing these two marks would clearly differentiate
them and would simply not consider them to be the same mark.’”17 But Opposer
provides no testimony, surveys, or other evidence to support this conclusion. A party’s
argument is no substitute for evidence. Enzo Biochem, Inc. v. Gen-Probe Inc., 424
F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005) (“Attorney argument is no
substitute for evidence.”); Martahus v. Video Duplication Servs. Inc., 3 F.3d 417, 27
USPQ2d 1846, 1849 (Fed. Cir. 1993) (“[M]ere attorney arguments unsubstantiated

17 Opposer’s request for reconsideration, p. 17, 102 TTABVUE 17.
Opposition No. 91229891
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by record evidence are suspect at best”). Thus, Opposer’s often repeated argument
that APPLE MUSIC is “bizarre and incongruous”18 simply has no evidentiary
support.
Opposer also relies on Am. Paging Inc. v. Am. Mobilphone Inc., 13 USPQ2d 2036
(TTAB 1989), to support his argument that the presence of MUSIC in APPLE MUSIC
creates a different commercial impression, arguing, “[t]he addition of MUSIC also
provides more information to prospective consumers: consumers who simply buy The
Beatles records with [sic] APPLE mark during decades would not expect anything
more than records when they see [sic] APPLE mark.”19 Opposer’s contention that
consumers “would not expect anything more than records” is flatly contradicted by
the evidence which shows that Apple Corps long produced music in other formats,
including audio tapes, video tapes, CDs, and laser discs. Moreover, we simply
disagree that American Paging is controlling authority.
In American Paging, the Board stated that “the mark AMERICAN
MOBILPHONE PAGING and design conveys more information to potential
customers than does the mark AMERICAN MOBILPHONE and design.” Id. at 2039.
That is, “[c]ustomers who simply saw the mark AMERICAN MOBILPHONE and
design and who simply utilized registrant’s mobile phone services, would not know
they were dealing with a company that also rendered paging services.” Id. Here,
consumers familiar with the mark APPLE for musical sound recordings will get no

18 Id. at 13, 17, 19, and 20, 102 TTABVUE 14, 18, 20, and 21.
19 Id. at 18, 102 TTABVUE 19.
Opposition No. 91229891
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more information from the mark APPLE MUSIC because the term MUSIC conveys
no more information to consumers than they already have.
Instead, we relied on Am. Sec. Bank v. Am. Sec. & Trust Co., 571 F.2d 564, 197
USPQ 65 (CCPA 1978) and Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d
1645 (TTAB 2010), which held that the addition of a highly-descriptive or generic
term adds nothing to the origin-indicating significance of the distinctive portion of a
mark. As we stated in our decision, “[c]onsumers would know they were dealing with
a music company[.]”20 Accordingly, we see no error in our finding that APPLE and
APPLE MUSIC create the same, continuing commercial impression when used in
connection with Applicant’s goods and services.
E. Whether Applicant may tack its earlier use of APPLE on musical sound
recordings to its services
Opposer alleges that the Board erred in allowing Applicant to tack its earlier use
of the APPLE mark on “Gramophone records featuring music; [and] audio compact
discs featuring music” to Applicant’s APPLE MUSIC mark for services identified in
the pending application. Opposer argues that for a number of reasons “[t]he Board
doesn’t take under consideration the fact that the set of the Goods is not substantially
identical to [sic] set of the Services.”21
Opposer first argues that the Board improperly “compared ONE service from a
long list of the Services, with ‘sound recordings’ that is not even in the list of the Goods

20 Opinion of April 16, 2021, p. 50, 101 TTABVUE 50.
21 Opposer’s request for reconsideration, p. 8, 102 TTABVUE 9.
Opposition No. 91229891
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and avoided comparing set to set as required by case law recognized by the Board.”22
It was not improper for the Board to refer to Applicant’s goods in Registration No.
2034964 (“the ’964 registration”) as “sound recordings” rather than “Gramophone
records featuring music; [pre-recorded audio tape cassettes featuring music;] audio
compact discs featuring music [; pre-recorded video tape cassettes featuring music]
[; video laser discs featuring music].”23 Opposer elevates form over substance. The
Board may use shorthand to refer to unwieldly identifications, particularly where, as
here, the decision devoted more than seventeen pages to discussing Apple Corps’
musical sound recordings produced in various formats. See Grote Indus., Inc. v.
Truck-Lite Co., 126 USPQ2d 1197, 1202 (TTAB 2018) (for convenience, Board may
use shorthand to refer to goods or services of the parties).
Nor was it error for the Board to tack Applicant’s earlier use of the APPLE mark
on musical sound recordings to only some of Applicant’s services. Opposer argues that
“Applicant failed to demonstrate that the set of the Services is ‘substantially identical’
to the set of the Goods.”24 Opposer appears to be arguing that to establish the defense
of tacking, a party must show that all of the goods or services for which registration
is sought must be substantially identical to all of the goods or services upon which
the mark was earlier used. For support, Opposer points to language in Big Blue
Prods. Inc. v. Int’l Bus. Machs. Corp., 19 USPQ2d 1072, 1075 (TTAB 1991), which

22 Id. at 3, 102 TTABVUE 4.
23 Although some goods such as audio and video tape cassettes are no longer sold by Applicant
and have been deleted from the ’964 registration, these goods were in use as of the time
periods in question and remain relevant to the overall priority determination.
24 Opposer’s request for reconsideration, p. 3, 102 TTABVUE 4.
Opposition No. 91229891
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states: “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 for the purposes of obtaining or maintaining
a registration should be permitted only when the two sets of goods or services are
‘substantially identical.’” Id.
We disagree with Opposer’s interpretation of Big Blue Products that all of the
goods and services must be substantially identical. Such an interpretation would
require a party to establish priority of use for each and all of its goods or services.
This is not required. It is sufficient to find priority as to any goods or services
encompassed by the application and registration. See Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic,
llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744
(Fed. Cir. 2017). Instead, we interpret the language “two sets of goods or services” in
Big Blue Products as referring only to those goods or services to and from which a
party seeks to tack. As we noted in our earlier decision, “Neither Opposer nor
Applicant need prove, and we need not find, priority as to each service listed in the
respective recitations of services.”25 Thus, Applicant need only establish priority by
tacking its earlier use of the APPLE mark on musical sound recordings to a service
encompassed by its application and Opposer’s services.
Opposer further argues that the Board erred by using the wrong test for
determining whether Applicant could tack its prior use of the APPLE mark on sound
recordings to the production and distribution of sound recordings identified in Apple’s
APPLE MUSIC application. Opposer relies on the “substantially identical” test set

25 Opinion of April 16, 2021, pp. 15-16, 101 TTABVUE 15-16.
Opposition No. 91229891
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out in Big Blue Products, 19 USPQ2d at 1075, whereas the Board cited to the “the
same or similar” test set forth in In re Baroid Drilling Fluids Inc. v. Sun Drilling
Prods., 24 USPQ2d 1048, 1051 (TTAB 1992). Opposer again elevates form over
substance. “[T]he tacking doctrine exists for compelling reasons: to protect consumers
from being misled about the source of products and facilitate their purchasing
decisions.” Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158, 1168 (9th Cir. 2013), aff’d,
574 U.S. 418 (2015). Under either test, consumers will not be misled because
Applicant’s products are the same as they always have been: musical sound
recordings.
“It is well settled that “incremental and gradual changes in a product are normal
and expected” and “modernization and style changes are common and expected by
buyers.” 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 17:24 (5th ed.);
RESTATEMENT THIRD, UNFAIR COMPETITION § 30, comment b (1995) (“A change in the
kind of goods or services marketed under the trademark is not an abandonment of
the trademark owner’s priority if the new goods or services are sufficiently related to
the original goods or services such that prospective purchasers are likely to perceive
the new product as originating from the same source as the original product.”).
Our case law similarly holds that “a change in the nomenclature of a product, the
formulation or the primary purpose of a product, or even a change in a type of product
does not constitute an abandonment of the mark used therewith.” See E.I. Du Pont
De Nemours and Co. v. G.C. Murphy Co., 199 USPQ 807, 813 (TTAB 1978); see also
Ralston Purina Co. v. On-Cor Frozen Foods, Inc., 746 F.2d 801, 805 (Fed. Cir. 1984)
Opposition No. 91229891
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(change in formulation of product did not change the “inherent and identifiable
character” of the product).
A change from a physical format to a digital format is such a permissible change
expected by consumers.26 As we noted in our decision, in 2015, Applicant “launched
the APPLE MUSIC streaming service for publishing and distributing music. APPLE
MUSIC provides consumers access to Applicant’s music catalog comprising some 60
million songs.”27 Through its APPLE MUSIC service, Applicant is delivering to
consumers the same product, musical sound recordings, as those identified in the ’964
registration. Only the format of the musical recordings have changed from those set

26 Indeed, the USPTO has recognized the problem of evolving technology and static
trademark registrations by establishing The Technology Evolution Pilot Program which
allows registrants to update the terminology in their registrations without filing new
applications. See Announcement of Pilot Program to Allow Amendments to Identifications of
Goods and Services in Trademark Registrations Due to Technology Evolution at
http://www.uspto.gov/sites/default/files/documents/Technology_Evolution_Pilot_Program.do
cx. As stated by the USPTO:
We have initiated a pilot program that allows certain trademark
owners to amend the goods/services identified in their
trademark registrations. You may be able to participate if you
provide the same fundamental goods/services through an
updated means, method, or format. For example, if your
registration identifies your goods as “printed children’s books,”
you may be eligible to amend the goods to “downloadable
electronic children’s books” if you no longer provide the books in
a printed format.
(Https://www.uspto.gov/trademarks/maintain/amending-your-registration-s-goodsservices-
when).
The pilot program is only available to registrants that no longer make the outdated goods,
and the pilot program includes a period for public comment. Nevertheless, the program
recognizes that content in given format may remain the same even if the format is later
replaced by a newer one. For example, the pilot guidelines state that “[a]n amendment would
be permitted from ‘phonograph records featuring music’ in International Class 9 to ‘providing
on-line music, not downloadable’ in International Class 41, which is a service of providing
content in a new manner, i.e., ‘on-line.’” Id.
27 Opinion of April 16, 2021, p. 25, 101 TTABVUE 25.
Opposition No. 91229891
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forth in the ’964 registration, i.e., gramophone records and audio compact discs
featuring music to streaming music files. The music is still the same and comes from
the same source. As we noted, “sound recordings are inseparable from the production
and distribution of sound recordings.”28 Thus, under either test for tacking goods or
services, “substantially identical” or “the same or similar,” Applicant’s products are
the same: musical sound recordings.
Here, the record establishes that Applicant is currently producing and
distributing the very same Beatles albums that it has sold under the APPLE mark
since the late 1960s. As we noted in our decision, “Jones testified that ‘The Beatles
recordings are ‘evergreen,’ meaning versions of The Beatles recordings have been
available continuously every year after their original release.’”29 The only difference
between Applicant’s goods and services is the change in the format in which the music
is presented. Accordingly, Opposer’s argument that Applicant goods, Gramophone
records and audio compact discs featuring music, cannot be substantially identical to
production and distribution of sound recordings is unpersuasive.
Opposer also argues that Applicant may not tack goods from International Class
9 to services in International Class 41: “[n]either Applicant nor the Board referred to

28 Id. at 51, 101 TTABVUE 51.
Although not referenced in the Board’s opinion, Applicant’s identification of services in
International Class 41 includes “entertainment services, namely, providing streamed and
downloadable audio and video content to users through a subscription service provided online
via a communication network” and Opposer’s identification of services in its pleaded
application in International Class 41 includes “providing a website for the uploading, storing,
sharing, viewing and posting of images, audio, videos, online journals, blogs, and multimedia
content in the fields of music[.]” These services are equally comparable to the musical sound
recordings in Applicant’s ’964 registration to the extent that they both provide consumers
with music in the most up-to-date format, i.e., online digital sound recordings.
29 Opinion of April 16, 2021, p. 27, 101 TTABVUE 27.
Opposition No. 91229891
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any authority which allows services and goods in different classes to be regarded as
the same or similar.”30 Opposer seeks to use the classification system to limit
Applicant’s rights. This argument is unpersuasive.
The system for classification of goods and services was created for the convenience
of the USPTO, and has no bearing on the issue of the relationship between goods and
services. Trademark Act Section 30 provides in pertinent part that “The Director may
establish a classification of goods and services, for convenience of Patent and
Trademark Office administration, but not to limit or extend the applicant’s or
registrant’s rights.” Trademark Act Section 30, 15 U.S.C. § 1112. “The separation of
goods [or services] into the various classes of the classification schedule is merely a
convenience for the Office and is not intended as a commentary on their relationship
to one another in the marketplace.” In re Sailerbrau Franz Sailer, 23 USPQ2d 1719,
1720 (TTAB 1992)); See also Nat’l Football League v. Jasper Alliance Corp., 16
USPQ2d 1212, 1216 n.5 (TTAB 1990) (“The classification system was established for
the convenience of the Office rather than to indicate that goods [or services] in the
same class are necessarily related or that classification in different classes indicates
that they are not related.”).
F. Conclusion
As stated in the Board’s decision, we “considered all of the testimony and evidence
introduced into the record.”31 We find Opposer has not demonstrated that, based on
the evidence properly of record and the applicable law, the Board’s decision is in error.

30 Opposer’s request for reconsideration, p. 3, 102 TTABVUE 4.
31 Opinion of April 16, 2021, p. 12, 101 TTABVUE 12.
Opposition No. 91229891
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Rather, Opposer simply expresses disagreement with the result reached therein,
reargues positions raised in its brief on final decision, or seeks to introduce new
arguments and evidence. As a result, we remain of the belief that our April 16, 2021
decision is correct.
Decision: The request for reconsideration is denied.