Shoko Naruo, an Intellectual Property partner in Thompson Coburn’s New York office, talked to Law360 about the major implications for trademark law resulting from the most significant decisions of 2023. In a midyear report by Law360, these rulings were highlighted, underscoring their importance in the realm of trademark law and offering crucial insights into the noteworthy cases of the year so far.
In a groundbreaking case, the Federal Circuit dealt a significant blow to Apple Inc.’s aspirations of securing trademark rights for "Apple Music" in live music performances. In the article, Shoko emphasized the importance of the ruling, stating, "This case is significant because it addresses the standard for tacking uses on different goods or services, which had not been previously explored in court."
The concept of "trademark tacking," allowing a brand to claim an earlier date of priority based on a slightly different earlier trademark, was firmly rejected by the court, challenging Apple's reliance on The Beatles' Apple Corps name.
Shoko highlighted that previous cases required tacking for the same goods or services to be "legal equivalents," but the Bertini v. Apple Inc. case took it further, necessitating "substantially identical" goods or services for tacking consideration.
Shoko offered advice for businesses seeking trademark priority, suggesting acquiring older marks covering similar goods to strengthen their claim. However, she cautioned that successfully invoking trademark tacking remains challenging due to the high court standard.
The Bertini v. Apple Inc. case serves as a crucial precedent for companies navigating trademark law to protect their intellectual property rights effectively.
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