September/October 2023 Decisions in Brief

In its motion for reconsideration, the defendants argued that the district court overlooked the numerosity requirement for selection and arrangement claims of infringement. The district court agreed that the issue of numerosity was disregarded earlier and considered it in the present decision. SAS alleged that the combination of the chord progression and the harmonic rhythm used in “Thinking Out Loud” is substantially similar to “Let’s Get It On,” amounting to copyright infringement. The parties agreed that the chord progression and harmonic rhythm in “Let’s Get It On” are not individually protected; however, the question was whether two common elements are numerous enough to make their combination eligible for copyright protection. The numerosity requirement says that numerous unprotected elements must be present before determining whether their selection and arrangement is protectable under copyright law. The district court explained that the numerosity requirement “prevents the misapplication of copyright law and ensures it is not being used to protect combinations that occur routinely without any minimal creative contribution attributable to the author.”

Here, the district court determined that the chord progression and harmonic rhythm in “Let’s Get It On” are so commonplace that to protect their combination would give a song an impermissible monopoly over a basic musical building block. Thus, the district court held that the chord progression and harmonic rhythm in “Let’s Get It On” cannot sustain copyright protection. Because the alleged copyright is not protectable, there was no infringement.

Warhol’s Use Was Not Fair Use in Orange Prince

► Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258, 2023 U.S.P.Q.2d 603 (2023). The U.S. Supreme Court held that the use of Lynn Goldsmith’s photograph in Andy Warhol’s Orange Prince illustration is not fair use. Goldsmith entered a licensing arrangement with the magazine Vanity Fair, in which Goldsmith licensed one of her photographs of Prince to the magazine. Vanity Fair hired Andy Warhol to make a silkscreen using Goldsmith’s photograph. Warhol’s work was published in the magazine alongside an article about Prince. Warhol subsequently created 15 additional works based on the Goldsmith photograph. Goldsmith became aware of the 15 additional works when Andy Warhol Foundation for the Visual Arts (AWF) licensed one of the works (Orange Prince) to Condé Nast for another story about Prince. Goldsmith notified AWF of the unauthorized use of the photograph, and AWF sued for declaratory judgment based on noninfringement and alternatively fair use. Goldsmith countersued for infringement. The district court granted summary judgment for AWF on fair use grounds. The Second Circuit reversed. AWF petitioned the Supreme Court.

The Supreme Court considered whether AWF’s use of Goldsmith’s photograph in connection with Orange Prince for Condé Nast was fair use. The Court focused on the first fair use factor, i.e., the purpose and character of the use, and whether AWF’s use was transformative. In considering the first fair use factor, the Court summarized the test as if an original work and secondary use share the same or substantially similar purposes, and the secondary use is commercial in nature, the first factor likely weighs against a finding of fair use. Applying this reasoning, the Supreme Court found that the purpose of the photograph in Orange Prince was essentially the same as the original licensed use, i.e., use for a magazine, and that the use of Orange Prince was commercial. In making this determination, the Court balanced the intent of the copyright law to incentivize creation, as well as the copyright owner’s exclusive right to create derivative works, with the fair use doctrine. The Court reasoned that fair use of a work must go beyond what is considered simply derivative. Because AWF’s use of Goldsmith’s photograph was for a similar purpose as the licensed use and was commercial, the Court found no fair use.

Patents

Anticipation

Arbutus Biopharma Corp. v. ModernaTX, Inc., 65 F.4th 656, 2023 U.S.P.Q.2d 439 (Fed. Cir. 2023). The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) final written decision holding the claims invalid as anticipated. The Federal Circuit found that the PTAB’s determination that the morphology limitation of the claim was inherently anticipated was supported by substantial evidence. The Federal Circuit found that incorporated references are sufficient to establish anticipation.

Claim Construction

AlterWAN, Inc. v. Amazon.com, Inc., 63 F.4th 18, 2023 U.S.P.Q.2d 300 (Fed. Cir. 2023). The Federal Circuit vacated and remanded the stipulation of noninfringement based on the district court’s claim constructions. The district court failed to indicate the exact basis of noninfringement. As a result, the stipulation did not provide sufficient detail to resolve the claim construction issues presented on appeal. The Federal Circuit therefore vacated the judgment and remanded for further proceedings.

Salazar v. AT&T Mobility LLC, 64 F.4th 1311, 2023 U.S.P.Q.2d 412 (Fed. Cir. 2023). The Federal Circuit affirmed the judgment of noninfringement. The Federal Circuit found that the district court properly construed “a microprocessor” to mean “one or more microprocessors,” which was consistent with Federal Circuit precedent. Because the Federal Circuit agreed with the district court’s claim construction, the Federal Circuit affirmed the judgment.

Enablement/Claim Construction

FS.com Inc. v. International Trade Commission, 65 F.4th 1373, 2023 U.S.P.Q.2d 484 (Fed. Cir. 2023). The Federal Circuit affirmed the International Trade Commission’s (ITC’s) findings that the claims were enabled. The ITC found that the claims were enabled because people of ordinary skill in the art would understand there was an inherent upper limit. The Federal Circuit agreed, finding that the specification and the expert testimony provided ample evidence. Regarding the term “a front opening,” the Federal Circuit found that nothing in the specification indicated an intention to depart from the general rule that “a” or “an” refers to one or more.

Estoppel

Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 2023 U.S.P.Q.2d 396 (Fed. Cir. 2023). The Federal Circuit affirmed in part, vacated in part, and remanded for further proceedings. The Federal Circuit affirmed the district court’s (1) finding that Valve failed to prove indefiniteness and (2) denial of Valve’s motion for judgment as a matter of law and for a new trial. The Federal Circuit also found that the district court improperly placed the burden of proof on Valve to show that it could not reasonably have raised the nonpetitioned grounds in its petition, when instead the burden of proof rested with Ironburg to prove that these were grounds Valve reasonably could have raised during the inter partes review (IPR).

Hatch-Waxman Act

Jazz Pharmaceuticals, Inc. v. Avadel CNS Pharmaceuticals, LLC, 60 F.4th 1373, 2023 U.S.P.Q.2d 233 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s order requiring Jazz to seek delisting of its patent covering a pharmacy distribution system from the Orange Book. The district court did not err in construing the claims as system claims and not method claims. In particular, the district court did not err in determining that the patent claims did not claim an approved method of using the drug under the Hatch-Waxman Act.

Inter Partes Review

Apple Inc. v. Vidal, 63 F.4th 1, 2023 U.S.P.Q.2d 299 (Fed. Cir. 2023). Apple and others filed actions challenging the U.S. Patent and Trademark Office Director’s instructions governing discretionary denials of IPRs in view of copending litigation. The Federal Circuit affirmed the district court’s finding that the IPR statute precludes judicial review of the Director’s instructions. The Federal Circuit, however, reversed in part because Apple had standing to pursue claims that the Director’s discretionary denial instructions were implemented without the required notice and comment.

CyWee Group Ltd. v. Google LLC, 59 F.4th 1263, 2023 U.S.P.Q.2d 158 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s denial of a request for rehearing on two IPRs in which all challenged claims were found unpatentable. CyWee’s request for rehearing stemmed from the Supreme Court’s Arthrex decision. The Federal Circuit, citing Arthrex and In re Palo Alto Networks, rejected all of CyWee’s procedural challenges to the PTAB’s decisions to deny rehearing.

Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 2023 U.S.P.Q.2d 297 (Fed. Cir. 2023). In an appeal from an IPR, the PTAB’s finding that the prior art did not disclose a claim limitation was not supported by substantial evidence in view of the prior art’s drawings. The PTAB also erred in rejecting Intel’s “known technique” rationale as a motivation to combine the two references.

Motion to Dismiss

Healthier Choices Management Corp. v. Philip Morris USA, Inc., 65 F.4th 667, 2023 U.S.P.Q.2d 446 (Fed. Cir. 2023). The Federal Circuit vacated and remanded the district court’s dismissal of the original complaint for further proceedings. The Federal Circuit applied the law of the Eleventh Circuit and found that the plaintiff’s complaint recited sufficient allegations to raise a facially plausible case of patent infringement.

Noninfringement/Invalidity/Tortious Interference

SSI Technologies, LLC v. Dongguan Zhengyang Electronic Mechanical Ltd., 59 F.4th 1328, 2023 U.S.P.Q.2d 183 (Fed. Cir. 2023). The Federal Circuit affirmed, reversed, and vacated in part the district court’s holdings (1) granting summary judgment of noninfringement with respect to the asserted patents to Dongguan Zhengyang (DZEM), (2) dismissing DZEM’s invalidity counterclaims with respect to the asserted patents, and (3) granting summary judgment of no tortious interference to SSI. For the noninfringement holdings, the Federal Circuit affirmed with regard to one of the patents since the claim construction was proper and under such a construction, there could not be infringement. For the other patent, the Federal Circuit vacated the district court’s noninfringement finding, as it had improperly required the claimed filter to require openings that were “smaller than a certain unspecified maximum size,” which was not supported.

Obviousness

Amgen Inc. v. Sandoz Inc., 66 F.4th 952, 2023 U.S.P.Q.2d 478 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s findings. The accused infringer appealed the decision that one of the patents was not invalid based on obviousness. Regarding the claims of the first patent, the Federal Circuit agreed that the district court did not err in its finding of strong indicia of nonobviousness. The Federal Circuit also agreed with the district court that another asserted patent was obvious in view of the prior art, finding that varying a dose in response to side effects is a well-known standard medical practice.

Chemco Systems, L.P. v. RDP Technologies, Inc., 2023 U.S.P.Q.2d 294 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s decision finding that the patent was not unpatentable as obvious. The PTAB found that the first asserted prior art combination did not disclose a claim limitation. For the second asserted prior art combination, the PTAB found that the petitioner failed to sufficiently explain why a person of ordinary skill in the art would have modified the prior art to arrive at the claimed invention. The PTAB’s finding that neither of the two combinations disclosed the claim limitation was supported by substantial evidence.

Roku, Inc. v. Universal Electronics, Inc., 63 F.4th 1319, 2023 U.S.P.Q.2d 398 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s final written decision holding that the claims were not unpatentable as obvious. The Federal Circuit found that the PTAB’s decision in this close factual dispute was supported by substantial evidence.

UCB, Inc. v. Actavis Laboratories UT, Inc., 65 F.4th 679, 2023 U.S.P.Q.2d 448 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s finding of invalidity based on obviousness. The Federal Circuit agreed with the district court’s reasoning that the claimed range did not produce unexpected results and that the claimed range had similar results to the ranges in the prior art. The Federal Circuit also found no evidence of commercial success because there were numerous patents covering the product and there existed other blocking patents.

Patentable Subject Matter

ChromaDex, Inc. v. Elysium Health, Inc., 59 F.4th 1280, 2023 U.S.P.Q.2d 182 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s summary judgment determination that the asserted claims of the patent were directed to unpatentable subject matter under 35 U.S.C. § 101. At issue were dietary supplements containing isolated nicotinamide riboside (NR), a form of vitamin B3 naturally present in cow’s milk in a nonisolated form. The claims of the patent broadly covered a composition to an isolated NR, where the only difference between the claim and natural milk was that the NR was in an isolated form. Applying Myriad and Chakrabarty, the Federal Circuit found that the act of isolating the NR compared to how NR naturally exists in milk was not sufficient, on its own, to confer patent eligibility and that the asserted claims did not have characteristics markedly different from natural milk. Although the Federal Circuit stated that the analysis could end with applying just the “markedly different characteristics” test, the Federal Circuit also applied the two-step Alice/Mayo framework to confirm that the claims were unpatentable under § 101.

Hawk Technology Systems, LLC v. Castle Retail, LLC, 60 F.4th 1349, 2023 U.S.P.Q.2d 211 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s grant of Castle Rock’s motion to dismiss Hawk’s patent infringement claims due to the claims being invalid under 35 U.S.C. § 101. The district court did not err in concluding that Hawk’s claims were directed to an abstract idea and failed to transform that abstract idea into patent-eligible subject matter. The district court did err when it did not expressly reject outside matters or convert the motion to dismiss into one for summary judgment. However, the district court’s error was harmless.

Sanderling Management Ltd. v. Snap Inc., 65 F.4th 698, 2023 U.S.P.Q.2d 449 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s motion to dismiss due to the asserted claims lacking patent-eligible subject matter. The Federal Circuit agreed that if the claims were directed to patent-ineligible subject matter under all constructions, then the district court did not need to construe the claims. Regarding the second step in determining patent ineligibility, the Federal Circuit found that the patentee failed to timely identify factual disputes.

Sequoia Technology, LLC v. Dell, Inc., 66 F.4th 1317, 2023 U.S.P.Q.2d 447 (Fed. Cir. 2023). The Federal Circuit reversed the district court’s determination of ineligibility due to 35 U.S.C. §101. The Federal Circuit found that the district court’s claim construction erroneously relied on extrinsic evidence and that the intrinsic evidence supported a construction that was patent ineligible.

Patent-Holder Speech Rights

Lite-Netics, LLC v. Nu Tsai Capital LLC, 60 F.4th 1335, 2023 U.S.P.Q.2d 207 (Fed. Cir. 2023). The Federal Circuit vacated and remanded the district court’s preliminary injunction that barred Lite-Netics from suggesting that (1) Nu Tsai d/b/a Holiday Bright Lights (HBL) is a patent infringer and copied Lite-Netics’ lights, or (2) HBL’s customers might be sued. In doing so, the Federal Circuit found that Lite-Netics’ claims were not “objectively baseless”—a requirement to restrict a patentee’s speech on its patent rights—either under literal infringement or the doctrine of equivalents. In particular, for the first set of accused string lights (Magnetic Cord), which use a base with two magnets, the Federal Circuit found that the Magnetic Cord could reasonably read on the claimed “a magnet” under literal infringement or, assuming the asserted patents were restricted to one magnet, could satisfy the function-way-result formulation for equivalence. Moreover, for the second set of accused string lights (Magnetic Clip), which use a base that touches the bottom of the light socket, the Federal Circuit found that the accused lights could reasonably be considered “attached” to the bottom of the light socket in view of the intrinsic evidence. Thus, the Federal Circuit vacated the preliminary injunction and remanded the case.

Public Interest

Philip Morris Products S.A. v. International Trade Commission, 63 F.4th 1328, 2023 U.S.P.Q.2d 408 (Fed. Cir. 2023). The Federal Circuit affirmed the ITC’s decision in full. The Federal Circuit found that Philip Morris failed to do more than suggest that the ITC may find value in discussing the public interest issue with the Food and Drug Administration (FDA). As a result, the Federal Circuit found that Philip Morris forfeited the argument. Notwithstanding, the Federal Circuit concluded that the ITC satisfied its duty to consult with the Department of Health and Human Services and the FDA.

Public Use Bar

► Minerva Surgical, Inc. v. Hologic, Inc., 59 F.4th 1371, 2023 U.S.P.Q.2d 194 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s grant of summary judgment that the asserted claims were anticipated under the public use bar of pre-AIA 35 U.S.C. § 102(b). The Federal Circuit agreed that the patented technology was “in public use” because, before the critical date, the patentee disclosed 15 patent-practicing devices over the course of several days at an industry event dubbed “the industry’s Super Bowl” and attendees at the event were not subject to any confidentiality obligations. The Federal Circuit also agreed that the technology was “ready for patenting” because the patentee considered the 15 disclosed devices to be fully functional working prototypes and the patentee’s internal technical documentation otherwise enabled the claimed technology.

Writ of Mandamus/Transfer

► In re Google LLC, 58 F.4th 1379, 2023 U.S.P.Q.2d 132 (Fed. Cir. 2023). The Federal Circuit granted Google’s writ of mandamus, directing the U.S. District Court for the Western District of Texas (Western District) to transfer the case to the U.S. District Court for the Northern District of California (Northern District). The Federal Circuit found the district court’s denial of transfer to be clearly erroneous. Specifically, the Federal Circuit found that, contrary to the district court’s suggestion, four of the Volkswagen factors (not two) weighed heavily in favor of transfer, at least because (1) the accused technology was researched, designed, and developed in the Northern District; and (2) and key personnel with knowledge about the technical and financial issues relating to the case were in the Northern District. The Federal Circuit further found that the other four Volkswagen factors were, at best, neutral to either party, at least because (1) the judicial efficiencies identified by the district court were present in both the Northern District and Western District, and (2) Jawbone (the patentee) conducted no activities from Texas that related to the accused technology. Thus, the Federal Circuit found that the center of gravity of the action was in the Northern District, and it was clear error to deny Google’s motion to transfer.

Written Description

Regents of the University of Minnesota v. Gilead Sciences, Inc., 61 F.4th 1350, 2023 U.S.P.Q.2d 269 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s decision in an IPR finding the claims unpatentable as being anticipated. The PTAB found that the patent was not entitled to its claimed priority date because the prior application failed to provide a written description sufficient to support the patent claims. The PTAB’s finding was supported by substantial evidence because the prior patent provided neither an ipsis verbis disclosure of the claimed subgenus nor sufficient blaze marks to satisfy the written description requirement.

Trade Secrets

Customer Lists

Lobo City Mex MSB, LLC v. Amparito’s Market LLC, No. 4:23-CV-3087, 2023 WL 3434027, 2023 U.S. Dist. LEXIS 83451 (D. Neb. May 12, 2023). The only alleged trade secret was a customer list prepared by one of the defendants. The plaintiff alleged that the defendant created this list without authorization and in breach of her duty of loyalty. However, the plaintiff did not exert any time or effort in compiling the customer list, and therefore the customer list cannot be the plaintiff’s trade secret. The defendant’s creation of the customer list might support claims of tortious interference and breach of loyalty claims, but not a trade secrets claim.

Orient Turistik Magazacilik San ve Tic Ltd. STI v. Aytek USA, Inc., No. 22-4864 (SDW) (JBC), 2023 WL 3559049, 2023 U.S. Dist. LEXIS 87130 (D.N.J. May 18, 2023). Orient established a reasonable likelihood that the defendants used the plaintiff’s customer list without the plaintiff’s consent. The Defend Trade Secrets Act does not define the term “use,” but it should be expansively interpreted to encompass all the ways one can take advantage of trade secret information to obtain an economic benefit, competitive advantage, or other commercial value, or to accomplish a similar exploitative purpose, such as assisting or accelerating research or development.

Irreparable Harm

Allworth Financial LP v. Pivato, No. 2:23-cv-00829-TLN-KJN, 2023 WL 3570084, 2023 U.S. Dist. LEXIS 87950 (E.D. Cal. May 19, 2023). The plaintiff argued that the threat of trade secret misappropriation and damage to customer relationships and goodwill constitute irreparable harm justifying the entry of injunctive relief. However, the plaintiff must produce evidence that irreparable harm is not just possible, but likely, absent preliminary relief.

Nondisclosure Agreements

Orbital Engineering, Inc. v. DVG Team, Inc., No. 2:22-CV-185-JPK, 2023 WL 3160302, 2023 U.S. Dist. LEXIS 74216, 2023 U.S.P.Q.2d 514 (N.D. Ind. Apr. 28, 2023). There is no per se requirement that trade secrets be protected with nondisclosure agreements. Orbital alleged that its employee handbook forbade the disclosure and use of trade secret information as a condition of employment and the information was given to employees on a “need to know” basis. The reasonableness of measures to safeguard trade secrets is a question of fact for the jury.

Sufficient Specificity

ImageTrend, Inc. v. Locality Media, Inc., No. 22-cv-0254 (WMW/DTS), 2022 WL 17128009, 2022 U.S. Dist. LEXIS 211741 (D. Minn. Nov. 22, 2022). Because of the sensitive nature of the alleged trade secret information underlying trade secret misappropriation claims, a plaintiff need not identify its trade secrets in the complaint. The plaintiff, however, cannot rely on conclusory statements that simply repeat the elements of a trade secret misappropriation claim. A plaintiff must disclose sufficient information to infer more than a mere possibility of misconduct.

Trademarks

Failure to Function/Reversal

► In re Lizzo LLC, Serial Nos. 88466264, 88466281, 2023 U.S.P.Q.2d 139 (T.T.A.B. Feb. 2, 2023). Lizzo LLC, the holding company of the singer known as Lizzo, sought registration of the trademark 100% THAT BITCH for clothing. The examining attorney refused registration, asserting that 100% THAT BITCH was a “commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment.” The applicant argued that the mark was inspired by a lyric in one of Lizzo’s songs.

The examiner asserted that the mark was likely to be seen for the meaning of its wording, as a reference to self-confidence and female empowerment, and not as a source indicator, and provided numerous evidence of the same.

Upon reviewing the evidence, the Trademark Trial and Appeal Board (TTAB) noted that much of the evidence came from the applicant’s own website, and several pieces of evidence referenced Lizzo herself or her song. The TTAB also took note of evidence from the applicant that included third-party registrations for marks consisting of lines from popular song lyrics, and copies of takedown requests sent by the applicant’s counsel to Etsy and other retailers regarding allegedly infringing uses of the phrase. Some of the retailers’ responses recognized Lizzo as the source of the phrase 100% THAT BITCH.

Thus, the TTAB found that it was significant that much of the evidence that included the phrase 100% THAT BITCH referenced Lizzo, her music, and her song lyrics. The TTAB then found that most consumers would perceive 100% THAT BITCH used on clothing as associated with Lizzo rather than a commonplace expression. Accordingly, the refusal was reversed.

Identification of Applicant

Phat Scooters, Inc. v. Fatbear Scooters, LLC, Cancellation No. 92078878, 2023 U.S.P.Q.2d 486, 2023 BL 134759 (T.T.A.B. Apr. 21, 2023). The petitioner filed for partial summary judgment on its claim that the trademark application for the mark FAT BEAR was void ab initio because it was not filed by the rightful owner of the mark. The now-registered trademark for FAT BEAR was filed in 2019 in the name of Fatbear Scooters, LLC, denoted in the application as a New Jersey LLC. The parties agreed that entity did not exist as of the filing date of the application. The petitioner argued that because the application was filed in the name of an entity that did not exist as of the filing date of the motion for summary judgment and no corrective action was taken to form that entity before the mark registered or before the filing of the petition to cancel the registration, Fatbear Scooters could not have owned the mark during that time. It further argued that the limited exception allowing an applicant to correct a mistake in the way the applicant is set out in the application applies only before a registration issues, and, therefore, the registration was void ab initio. In response, Fatbear Scooters argued that it was only due to an “oversight” that Fatbear Scooters was not registered until 2022. The TTAB construed Fatbear Scooters’ response to the motion for partial summary judgment as a cross-motion to amend its registration due to a correctable owner’s mistake.

The TTAB found that the fact that (1) the entity named in the underlying application did not exist at the time of filing, and (2) the chain of title was in the same, single commercial enterprise was sufficient to warrant a correction of the misidentification of the applicant and to demonstrate that the error was inadvertent and made in good faith. As such, the partial summary judgment in the respondent’s favor on the petitioner’s claim that Fatbear Scooters, LLC was not the rightful owner of the mark was provisionally granted and the claim was provisionally dismissed with prejudice contingent on the respondent’s payment of the required fee to correct the misidentification.

Likelihood of Confusion

In re Charger Ventures LLC, 64 F.4th 1375, 2023 U.S.P.Q.2d 451 (Fed. Cir. 2023). Charger sought to register the mark SPARK LIVING for “leasing of real estate; real estate listing; real estate services, namely, rental property management.” Charger later amended its application to cover only residential real estate services and disclaimed the term “Living.” The TTAB sustained the refusal of the application based on a likelihood of confusion with SPARK for “real estate services, namely, rental brokerage, leasing and management of commercial property, offices and office space.” Charger filed an appeal to the Federal Circuit, which affirmed the TTAB’s decision.

The Federal Circuit noted that the TTAB addressed several of the DuPont factors in its analysis, including similarity of the marks, services, and trade channels; strength of the marks; and conditions under which sales are made. The TTAB found that evidence of third-party registrations showed that residential real estate services and commercial real estate services could emanate from a single source under a single mark. Additionally, website evidence showed commercial and residential real estate services offered under the same or similar marks, and that commercial and real estate services could be offered by the same entity on different or the same websites. Moreover, the TTAB found that classes of consumers may overlap.

On the strengths of the marks, evidence of marketplace uses of the term “Spark” was probative of some commercial weakness of the mark. However, the TTAB noted that “even weak marks are entitled to protection.” On the issue of similarity of the marks, SPARK LIVING was found to be overall very similar to SPARK, and the differences did not outweigh the similarities. Consumers could mistakenly believe that SPARK LIVING represented a variation of SPARK. Therefore, the Federal Circuit found there was sufficient evidence of a likelihood of confusion and affirmed the TTAB’s decision.

Tacking

► Bertini v. Apple Inc., 63 F.4th 1373, 2023 U.S.P.Q.2d 407 (Fed. Cir. 2023). Charles Bertini appealed a final decision from the TTAB dismissing his opposition to Apple Inc.’s application to register its mark APPLE MUSIC in class 41 for distribution of sound recordings and presenting live musical performances. The Federal Circuit reversed.

The TTAB dismissed Bertini’s opposition of Apple’s registration of APPLE MUSIC on the ground that it would likely cause confusion with Bertini’s common law trademark APPLE JAZZ, which he had been using in connection with concerts since 1985 and to distribute sound recordings under his record label since the mid-1990s. These dates and the issue of a likelihood of confusion were not disputed on appeal. The only disputed issue was priority of use.

Although Apple did not begin using the mark APPLE MUSIC until 2015 when it launched its music streaming service, it argued that it was entitled to an earlier priority date of 1968 based on trademark rights it purchased from Apple Corps, the Beatles’ record company, in 2007, including a trademark registration for APPLE for gramophone records and audio compact discs, having a first use date of 1968. The TTAB found that Apple continuously used the APPLE mark since 1968 and that Apple was entitled to tack its 2015 use of APPLE MUSIC to Apple Corps’ 1968 use of APPLE, thereby giving Apple priority over Bertini. Bertini appealed.

The Federal Circuit found that Apple could not tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records. Specifically, the Federal Circuit held that a trademark applicant cannot establish priority for every good or service in its application merely because it had priority through tacking in a single good or service listed in its application. Here, the APPLE MUSIC application included 15 broad categories of services, and Bertini needed to show—and did show—only that he had priority of use of APPLE JAZZ for any service listed in Apple’s application. Additionally, because Apple’s use of its mark with live musical performances was not “substantially identical” or within normal product evolution to Apple Corps’ use of its mark on gramophone records, tacking was improper. Thus, the Federal Circuit reversed the TTAB’s dismissal of Bertini’s opposition.