Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA933679
`11/07/2018
`
`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91229891
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`Party
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`Correspondence
`Address
`
`Plaintiff
`Charles Bertini
`
`JAMES BERTINI
`423 KALAMATH STREET
`DENVER, CO 80204
`UNITED STATES
`jamesbertini@yahoo.com, iklych@yahoo.com
`303 572-3122
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Reply in Support of Motion
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`James Bertini
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`jamesbertini@yahoo.com
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`/james bertini/
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`11/07/2018
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`Reply of Opposer.pdf(39427 bytes )
`Declaration of Charles Bertini Reply.pdf(14097 bytes )
`Declaration of Irina Bertini Reply.pdf(12967 bytes )
`Declaration of James Bertini Reply.pdf(12240 bytes )
`Exhibits.pdf(5614706 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91229891
`Serial No. 86659444
`Mark: APPLE MUSIC
`Filing Date: June 11, 2015
`Publication Date: May 10, 2016
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` )
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`Opposer
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`
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`v.
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`CHARLES BERTINI,
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`APPLE INC.,
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` OPPOSER’S REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
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`Applicant.
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`
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`Opposer Charles Bertini files this Reply in Support of Motion for Summary Judgment
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`(“Motion” Dkt. 36-38) and opposing the Response (“Response” Dkt. 40-42) by Applicant.
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`The Response raises new affirmative defenses, is supported by a surprise witness not
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`identified in the Initial Disclosures, introduces previously undisclosed documents, and references
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`some of Opposer’s deposition testimony without supplying copies of the transcript. Importantly,
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`the Response does not dispute 62 of the Motion’s 64 Undisputed Facts (“UF”). Some of the new
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`affirmative defenses are not clearly labeled, or are deceptively labeled as disputed facts. Opposer
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`objects to these new affirmative defenses.
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`Applicant has not complied with this Board’s August 16, 2018 Order to Compel at Dkt.
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`35. I did receive some response from Applicant to the Order: a package was dropped outside my
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`home-office near the street by UPS two days after the Order’s deadline when I was away rather
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`than sent by email due to the “highly confidential nature of the documents,” according to an email
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`from attorney Jason Gonder who did not require a signature for delivery. The Order states at P8
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`“Applicant must produce the portion of the identified settlement agreements concerning
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`trademarks in response to Requests for Production Nos. 4, 5 and 6.” However, no documents
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`produced were responsive to Nos. 4 or 5 and there was no privilege log. See James Bertini Reply
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`Declaration (“James Reply Decl.”) ¶3, Ex. 154. According to Wikipedia, as a condition of
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`1
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`settlement of a lawsuit in 1981 Apple Computer agreed not to enter the music business. Irina
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`Bertini Reply Declaration (“Irina Reply Decl.”)¶ 9, Ex. 152. This supports Opposer’s position
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`that Applicant didn’t provide entertainment services in Class 41 at least prior to June 5, 1985, and
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`Opposer asks that the Board decide this issue in Opposer’s favor.
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`Applicant’s claim to be a famous company in recent years (P12) and reference to “the
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`Apple family of marks” (P1) are not relevant to the use of mark APPLE in Class 41 on or before
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`June 5, 1985. On and before June 5, 1985 Applicant was using the trade name Apple Computer,
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`Inc. (UF 24) and it was known for its Macintosh computers and related software. UF 24, Ex. 126.
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`It is undisputed that no application for standard character mark APPLE in Class 9 and Class 41
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`was ever filed at the USPTO by the Applicant or by Apple Corps prior to June 5, 1985, the date
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`of first use by Opposer. UF 15, 42, 43 and 44. As it is shown in the Motion and below neither
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`Apple Corps nor Applicant used mark APPLE in Class 9 or Class 41 at least during years 1982-
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`1986. Apple’s family of marks in Classes 9 and 41 simply didn’t exist on the date of June 5,
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`1985. There is nothing in the Lanham Act supporting the idea that an unregistered, abandoned
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`one-word, foreign mark can reserve rights for all combinations of that word in all classes in the
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`future. The law at 15 U.S.C. § 1127 prohibits reserving rights in marks without use in commerce.
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`The USPTO already ruled that combinations using the word “apple” are not conflicting
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`with the single word APPLE marks including in Class 41. The PTO registered marks
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`APPLEJAXX and APPLE JAM in Class 41 (UF 9, 10) when Reg. Nos. 2,034,964 and 3,317,089
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`existed in Class 9 (UF 44, 45, 53). The USPTO found that mark BLACK APPLE in Class 41
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`(Ser. No. 76447732) doesn’t conflict with any mark (Reg. No. 2,034,964 existed on this date).
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`The Priority Action for BLACK APPLE issued on March 11, 2003 states: “The examining
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`attorney … has found no similar registered or pending mark which would bar registration under
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`Trademark Act Section 2(d).” Irina Reply Decl. ¶ 2 Ex. 150. APPLE JAM was not found to be
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`conflicting with any mark when Registrations 2,034,964 and 3,317,089 existed in Class 9 and the
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`Application for Reg. No. 4088195 was pending. UF 10, 15, 44 and 53. It is clear that the
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`combination of word “apple” with other words doesn’t create the same commercial impression as
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`single word “apple” used as a trademark, otherwise the above marks would not be registered.
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`New Affirmative Defenses Raised in the Response
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`In its Answer at PP3, 4, Applicant’s only affirmative defenses are APPLE marks Reg.
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`Nos. 2,034,964, 3,317,089 and 4,088,195. But in the Response Applicant raises unpleaded
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`affirmative defenses as disputed facts: (a) APPLE JAZZ is descriptive and therefore it is not a
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`protectable mark, PP22, 23; (b) Opposer lacks proprietary rights in his common law mark, PP20,
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`21; (c) tacking of APPLE MUSIC to unregistered foreign common law mark APPLE, P14; (d)
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`date of first use by Opposer, P5. The Fed. R. Civ. P. 8(c) and 12(b) require affirmative defenses
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`to be pleaded in an Answer. A defendant may not rely on unpleaded affirmative defenses. See
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`Fed. R. Civ. P. 56 (a) and (b); TBMP 311.02(c); Chicago Corp. v. North American Chicago
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`Corp., 20 USPQ2d 1715, 1717 n.5 (TTAB 1991) (defense that opposer lacks proprietary rights in
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`its common law mark raised for first time in final brief was neither pleaded nor tried); H.D. Lee
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`Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) (defense of tacking must be
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`pleaded to put opposer on notice of new matter that applicant is placing at issue). Opposer objects
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`to these new defenses. To the best of its ability to identify all of the new defenses spread
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`throughout of the Response, Opposer will address them in this Reply.
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` APPLE JAZZ is a Protectable Mark
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`There are five classifications of trademarks: (1) generic; (2) descriptive; (3) suggestive;
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`(4) arbitrary; or (5) fanciful. See Taco Cabana Int'l, Inc. v. Two Peso, Inc., 505 U.S. 763, 768
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`(1992). The Tenth Circuit has defined these terms as follows: “…An arbitrary mark has a
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`common meaning unrelated to the product for which it has been assigned.” See, Heartsprings,
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`Inc. v. Heartsprings, Inc., 143 F.3d 550, 555 (10th Cir. 1998). Moreover, two dictionary words
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`which might be generic on their own and incapable of protection, when combined, can function
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`as a protectable mark. See Hunt Masters, Inc. v. Landry's Seafood Restaurant, Inc., 240 F.3d
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`251, 254 (4th Cir. 2001). The common meaning for the word “apple” is a fruit and for “jazz” is a
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`3
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`music genre. None of these words separately or both together describe or are related to services
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`provided by the Opposer. UF3, Ex. 132. APPLE JAZZ is an arbitrary mark for all services
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`provided by the Opposer since it is a unique unitary mark. Motion P12. The Examining Attorney
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`in the Office Action didn’t identify APPLE JAZZ as descriptive mark, therefore APPLE JAZZ
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`mark already passed the test to be a protectable mark since the application to register
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`Opposer’s mark in the Principal Register was refused only under Section 2(d). James Bertini
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`Decl. ¶3, Ex. 130. In any event during more than 30 years of use Opposer’s mark is naturally
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`distinctive since a reservoir of goodwill has been developed in the APPLE JAZZ mark among a
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`number of dedicated customers, fans, musicians and contractors of APPLE JAZZ. Charles
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`Bertini Decl. ¶10, all Exs. to the Motion.
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`In an effort to prove that APPLE JAZZ is not a protectable mark, the Response at P23
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`states that the word “apple” is commonly used in Central New York State to refer to harvest
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`festivals and cultural events. Ex. H. It is not shown in any exhibit that mark APPLE JAZZ
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`was used for such events. On P12 of the Motion Opposer clearly demonstrated that his mark is
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`a unitary mark. On Opposer’s registered logo the words are presented as one word AppleJazz
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`(Declaration of Charles Bertini for Reply ¶9, (“Charles Reply Decl.”), Ex. 59) showing that the
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`elements of a mark are so integrated and merged together that they cannot be regarded as
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`separable. Therefore, “apple” events are irrelevant since the APPLE JAZZ mark is not used to
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`identify any of these events.
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`Opposer Has Exclusive Rights in His Mark APPLE JAZZ
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`Opposer coined the mark APPLE JAZZ and he has been using his mark for decades; no
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`one has claimed ownership of this mark or sent him a cease and desist letter. UF 2, 4. APPLE
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`JAZZ is not only used as a name for the band but also used for a number of services offered under
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`this mark and provided by Opposer. Charles Bertini Decl. 2, 8, Ex. 124. A verified statement of
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`ownership of the mark was included to the Response to Office Action (James Bertini Decl. ¶5,
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`Ex. 68) and it is part of USPTO records. Opposer disclosed and presented as exhibits multiple
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`4
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`documents showing his exclusive rights in the mark APPLE JAZZ. Opposer disclosed the
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`Certificate of Registration of Service Mark issued exclusively to Charlie Bertini on October
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`31, 1991 by the Department of State of the State of New York which registered Opposer’s logo, a
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`combination of “AppleJazz” and a depiction of an apple with date of first use in New York State
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`of “1986”. Charles Bertini Reply Declaration (“Charles Reply Decl.”). ¶9, Ex. 59. Opposer has
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`been the owner of the website www.applejazz.com since 1998. UF 2; Charles Reply Decl. ¶9,
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`Ex. 146. Opposer also disclosed his renewal of a fictitious name from the Florida Department of
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`State for AppleJazz Records dated February 28, 2005 indicating that the name was registered on
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`October 23, 1995 and that its owner is Charlie Bertini. Charles Reply Decl. ¶10, Ex. 103 P4.
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`The Harry Fox Agency, Inc. has represented Opposer as APPLEJAZZ MUSIC since September
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`3, 1998. UF 12; Charles Reply Decl. ¶¶7, 8, Exs. 147, 148 . Opposer personally signed the
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`Cloud Service License Agreement between Applicant and Opposer’s AppleJazz Music. UF 11.
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`Exhibits to the Motion show that: Opposer signs contracts for APPLE JAZZ (Ex. 30); letters for
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`APPLE JAZZ are sent to Opposer (Exs. 6, 16, 17); news articles refer to “his” band or group
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`(Exs. 14, 22, 23); ads refers to APPLE JAZZ as Charles Bertini’s band (Ex. 18, 21); proceeds
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`from concerts are paid to Opposer (Ex. 19).
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`The Response cites cases completely inapposite to Bertini’s circumstances: Robi v. Reed,
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`173 F.3d 736 (1999) is about members of a band suing each other claiming rights to the
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`trademark, and Bell v. Streetwise Records, Ltd., 640 F. Supp. 575 (1986) is about a band suing
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`their record company also for trademark rights.
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`New and Undisclosed Witness and New and Undisclosed Documents
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`Applicant supports the Response with a Declaration by Apple Corps CEO Jeffrey
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`Vaughn Jones of the UK (a) a previously undisclosed witness (James Reply Decl ¶4, Ex. 153)
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`(violation of Fed. R. Civ. P. 26(a) and (e), 56(c)(4)), (b) who declares legal conclusions as facts
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`(violation of Rule 56(c)(4)), (c) whose declarations are general statements (e.g. ¶30 “Apple Corps
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`has continuously used its globally recognized and well known Apple Corps APPLE
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`trademarks…”) (violation of Rule 56(c)(4)); (d) unsupported by evidence and which is therefore
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`a bare statement (violation of Rule 56(c)(4)); and (e) is supported by previously undisclosed
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`documents (violation of Rule 26(a) and (e) with remedy supplied by Rule 37(c)(1) and the
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`Board’s August 16, 2018 Order to Compel P10 Note 16.) Opposer objects to his testimony and
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`to his exhibits, none of which contain Bates numbers, and consequently Opposer believes they
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`have not been previously disclosed. According to Hornblower & Weeks Inc. v. Hornblower &
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`Weeks Inc., 60 USPQ2d 1733, 1736 (TTAB 2001), if a declaration is internally consistent, not
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`characterized by uncertainty and unchallenged it can be accepted. See also TBMP 528.05. Thus,
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`the reverse must be true and this Declaration should not be accepted. Opposer challenges the
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`Declaration of Mr. Jones and the accompanying exhibits. His testimony is general, conclusory
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`and he never states that any services were performed under any APPLE mark in the U.S.
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`Despite Applicant’s touting of the importance of The Beatles in the development of the
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`APPLE mark, neither the Applicant nor the CEO of Apple Corps produced a single copy of proof
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`of use of the APPLE mark in commerce during at least years 1982-1986, nor did they produce a
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`single newspaper or magazine article during the same period reporting about new releases of one
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`of the most famous rock groups in the world. Mr. Jones claims to be familiar with licensing of
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`goods of Apple Corps but he failed to produce even a page of any licensing agreement for goods
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`under Apple Corps trademarks during 1982-1986. Meanwhile, the history of The Beatles and
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`their records are so well-preserved by the public that even the Apple Corps website incorporates
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`Wikipedia information as true information. Jones Decl. ¶14, Ex. 1.
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`Mr. Jones makes general statements regarding continuous use of Apple Corps marks in
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`the U.S. Jones Decl. ¶13. In ¶16 he refers to the release of Abbey Road on CDs in the 1980s, but
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`he doesn’t indicate the year of the release nor does he provide a copy of the CD cover as an
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`exhibit. In fact, there were no Abbey Road releases during years 1979-1986. Irina Reply Decl. ¶
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`¶ 3,4, Ex.151 P3.
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`Mr. Jones states in ¶19 that Let It Be was released in the 1980s, but his Ex. 6 shows the
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`year 1993 only. In fact, there were no Let It Be releases during years 1971-1986. Irina Reply
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`Decl. ¶ 5, Ex. 151 P2. Mr. Jones makes an unsupported statement in ¶20 about the All Things
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`Must Pass release in 1986 but Ex. 7 doesn’t show the year of production. According to
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`Wikipedia, Apple Records released this album only in 2000. Irina Reply Decl. ¶ 8, Ex. 149.
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`Cassette releases took place in 1970 and 1991. There were no releases during years 1978-1986.
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`Irina Reply Decl. ¶6, Ex. 151 P7.
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`No documents produced show releases of any Beatles records during years 1982-1986
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`even on third party labels. No documents produced show any commercial activity of Apple
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`Records, Inc. or Apple Corps in the U.S. during years 1982-1986. In fact, there were no releases
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`of any Beatles albums on any label during years 1982-1986. Irina Reply Decl. ¶ 7, Ex. 151, UF
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`51, Ex. 79. Applicant doesn’t dispute UF 51 that the Apple Records label was reactivated only in
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`the 1990s. Since there was no production of records of Beatles during years 1982-1986 at all, no
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`Apple Corps common law marks were used in the U.S. during more than three continuous years.
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`"Nonuse for 3 consecutive years shall be prima facie evidence of abandonment” 15 U.S.C. §
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`1127. Once the mark has been abandoned, resumed use represents a new and separate use
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`of the mark that cannot be tacked on to the use before abandonment.
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`It is undisputed that Apple Corps filed an Application in the USPTO for a standard
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`character mark APPLE in Class 9 (U.S. Reg. 2034964) on June 26, 1995 and later accepted this
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`date as the filing date without reliance on foreign registration dated of January 17, 1992. UF 44,
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`45. It is undisputed that claimed priority date for Reg. No. 3,317,089 in Class 9 is 11/16/2000.
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`UF 53, 54.
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`No documents were presented by Mr. Jones to show use in commerce of mark APPLE in
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`the U.S. for services in Class 41 listed in the Reg. No. 4,088,195. It is undisputed that Applicant
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`doesn’t possess such documents. UF21. It is undisputed that the last live performance by The
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`Beatles took place on January 30, 1969 (UF 59) and the first Applicant’s iTunes® Festival to be
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`held in the U.S. was announced only in 2014. UF 34. Therefore, it is clear that “entertainment
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`services, namely, production of live musical performances” were abandoned by Apple Corps
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`since 1969 and not used by Applicant before or on the date of June 5, 1985 when Opposer
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`arranged his first music festival under name APPLE JAZZ. Online services listed in Reg. No.
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`4,088,195 could not be provided by Applicant or Apple Corps simply because none of them had a
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`website before or on the date of June 5, 1985 and the Internet was not available in general. UF
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`55-58, 64. It is undisputed that on the date of filing the Application for Reg. No. 4,088,195
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`(March 22, 2008) Applicant didn’t make use in commerce of its mark in the U.S. for services
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`listed in the application. Applicant’s claim of first use of mark APPLE for services listed in Reg.
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`No. 4,088,195 in 1981 is not material, because there is no proof for continuous use of the mark in
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`the U.S. during years 1982-1986 for services listed in the Registration Certificate. It is undisputed
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`that the claimed priority date for Reg. No. 4,088,195 is September 28, 2007. UF 36, 37.
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`“The Board will consider evidence taken from Wikipedia so long as the non-offering
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`party has an opportunity to rebut that evidence by submitting other evidence that may call into
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`question the accuracy of the particular Wikipedia information.” TBMP 1208.03. Applicant didn’t
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`dispute any evidence from Wikipedia attached as Exhibits to the Motion.
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`Applicant’s “Disputed Facts”
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`Applicant in his Disputed Facts presents ¶¶1, 2, 3 as facts while they are legal
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`conclusions by their nature. In any event as it is shown in the Motion and in this Reply,
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`Applicant failed to show use of any Apple mark in commerce during years 1982-1986, so such
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`conclusion regarding continuous use of marks in commerce made by an undisclosed witness with
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`undisclosed exhibits fails. In this view Disputed Facts ¶¶ 2, 3 become not material because
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`Opposer demonstrated his earlier and continuous use in commerce since June 5, 1985 and tacking
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`of APPLE MUSIC to APPLE marks can’t beat the earlier use in commerce of APPLE JAZZ
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`mark by Opposer since APPLE marks were abandoned in the U.S. for more than three continuous
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`years in 1982-1986. Also as stated above and in the Motion at PP19, 20, the USPTO doesn’t
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`consider marks APPLE in Class 9 similar to marks which are combinations of the word “apple”
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`in Class 41. So, the legal conclusions in ¶¶ 2,3 are not correct.
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`Disputed Facts ¶¶4, 6, 7 (¶5 is not included in the Response) are not material. It is not
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`disputed that some services were provided by Opposer on the date June 5, 1985. Even providing a
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`few services under the mark is sufficient to claim that use in commerce began on this date.
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`Control of quality of some services (in this case, the band only) is not the same as control over the
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`trademark. Opposer demonstrated with multiple documents and registration in New York State
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`that he is sole owner of APPLE JAZZ mark and controls the use of his mark during several
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`decades. The first use of APPLE JAZZ for a concert/festival developed to multiple services in
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`Class 41 as shown in the Motion, Declarations and Exhibits to the Motion and the Reply. Since
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`1998 Opposer has been promoting his services on his website while Apple Corps didn’t have any
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`website in 1998 (UF 55, 57) and Applicant couldn’t demonstrate use in commerce of mark
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`APPLE in Class 41 until November 11, 2011.
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`The Response P5 Note 3 states, regarding Opposer’s date of first use of APPLE JAZZ
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`that “Apple genuinely disputes this date, and it therefore remains to be disputed at trial.” The
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`note goes on to explain the reason for the dispute, i.e. that on June 5, 1985 Opposer only offered
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`some but not all the services he later offered (and listed in the Statement of Use with his
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`trademark application). This is not a disputed fact, but disputed law: according to 1109.09(a),
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`“The dates of first use for each class must apply to at least one item in the class but do not have to
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`apply to more than one item. However, the applicant must have used the mark in commerce on
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`all items listed in the notice of allowance before filing the statement of use.” If Opposer is wrong
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`and this is a disputed fact, Opposer has supplied ample evidence of this date of first use, i.e.
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`Charles Bertini’s Declaration supported by newspaper articles and advertisements. To the
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`contrary, Applicant has not supplied any evidence to support its position and nothing about it was
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`stated in any Declaration.
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`At Response P19 Note 5 Applicant makes misleading general statement about UFs of the
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`Motion ¶¶15-64 which are different from Opposer’s pleading in the Petition to Cancel. In any
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`event, following the Board’s order Opposer filed his amended Petition to Cancel Reg. No
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`4088195 alleging fraud and abandonment.
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`Conclusion
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`Opposer demonstrated the absence of any genuine dispute of material fact. Opposer owns
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`exclusive rights in the APPLE JAZZ mark. APPLE JAZZ is a protectable mark. There are no
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`facts that could be found to decide the question in favor of the Applicant since the evidence
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`presented shows that all Apple Corps marks were not used in commerce in the U.S. at least
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`during years 1982-1986 and were therefore abandoned according to 15 U.S.C. § 1127. On or
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`before June 5, 1985 neither Apple Corps nor Applicant applied for registration or registered any
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`mark APPLE in the U.S. in Class 9 or 41. Neither Apple Corps nor Applicant provided services
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`in the U.S. listed in Reg. No. 4,088,195 during 1982-1986, and therefore the claimed first use in
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`1981 for Reg. No. 4,088,195 is not material because of abandonment during more than three
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`years. Tacking of APPLE MUSIC to earlier registered marks APPLE can’t prevail over earlier
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`use by Opposer on June 5, 1985 since claimed priority dates for Reg. Nos. 2,034,964, 3,317,089
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`and 4,088,195 are after June 5, 1985. So, Opposer has prior rights in his mark over Reg. Nos.
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`2,034,964, 3,317,089, 4,088,195 and accordingly over the opposed APPLE MUSIC mark.
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`Applicant doesn’t dispute that APPLE JAZZ and APPLE MUSIC are confusingly similar marks.
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`WHEREFORE, Opposer requests that its Motion be granted.
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`/s/ James Bertini________________
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`JAMES BERTINI
`Attorney for Opposer Charles Bertini
`423 Kalamath Street
`Denver, CO 80204
`303 572-3122
`jamesbertini@yahoo.com
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`November 7, 2018
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and accurate copy of OPPOSER’S REPLY IN SUPPORT OF
`MOTION FOR SUMMARY JUDGMENT has been served on the following attorneys by email
`on November 7, 2018 by James Bertini.
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`Joseph Petersen
`Kilpatrick Townsend
`JPetersen@kilpatricktownsend.com
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`Jason Gonder
`Kilpatrick Townsend
`JGonder@kilpatricktownsend.com
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`Glenn Gundersen
`Dechert, LLP
`Glenn.gundersen@dechert.com
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`11
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`/s/ James Bertini_______________
`JAMES BERTINI
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`Alberto Garcia
`Agarcia@kilpatricktownsend.com
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`tmadmin@kilpatricktownsend.com
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`CERTIFICATE OF TRANSMITTAL
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` I
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` hereby certify that a true copy of the foregoing OPPOSER’S REPLY IN SUPPORT OF
`MOTION FOR SUMMARY JUDGMENT is being filed electronically with the TTAB via
`ESTTA on November 7, 2018.
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`/s/ James Bertini_______________
`JAMES BERTINI
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91229891
`Serial No. 86659444
`Mark: APPLE MUSIC
`Filing Date: June 11, 2015
`Publication Date: May 10, 2016
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`CHARLES BERTINI,
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`Opposer
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`DECLARATION OF CHARLES BERTINI FOR
`OPPOSER’S REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
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`
`I, Charles Bertini, hereby declare as follows:
`
`v.
`
`
`APPLE INC.,
`
`
`
`
`
`Applicant.
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`
`
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`1.
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`I am the Opposer in this proceeding. I make this Declaration based on my
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`personal knowledge in support of Opposer’s Reply in Support of Motion for Summary
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`Judgment. I am over the age of 21 and competent to make this Declaration.
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`2.
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`I registered domain name www.applejazz.com on January 24, 1998. Attached as
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`an Exhibit 146 are true and correct copies of a webpage downloaded from
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`http://whois.domaintools.com/applejazz.com and showing that I am a Registrant of the
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`domain name www.applejazz.com since January 24, 1998.
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`2.
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`I am the sole owner of domain name www.applejazz.com and of the website
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`associated with this domain name.
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`3.
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`I alone sign all contracts, correspondence and any other documents related to the
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`use in commerce of my mark APPLE JAZZ.
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`4.
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`I alone pay all bills associated with use in commerce my mark APPLE JAZZ.
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`

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`5.
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`I alone receive all payments associated with use in commerce my mark APPLE
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`JAZZ.
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`6.
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`I alone pay all taxes associated with income generated from use in commerce of
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`my mark APPLE JAZZ.
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`7.
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`Attached as an Exhibit 147 is a true and correct copy of a Foreign Representation
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`Notice between Charlie Bertini of AppleJazz Music and the Harry Fox Agency (“HFA”)
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`dated August 6, 1998 which authorized the HFA to represent music publisher AppleJazz
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`Music in various countries throughout the world.
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`8.
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`Attached as Exhibit 148 are true and correct copies of the following agreements
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`between Charlie Bertini of AppleJazz Music and the Harry Fox Agency (“HFA”) dated
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`August 6 or 21, 1998 which authorized the HFA and through it other agencies to
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`represent music publisher AppleJazz Music:
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`A.
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`Mechanical (Phonorecord) Authorization
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`B.
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`C.
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`Electrical Transcription Authorization
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`Public Broadcasting Authorization
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`D.
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`Synchronization Authorization
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`E.
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`F.
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`G.
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`H.
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`The Nashville Network (TNN) Authorization
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`JASRAC Authorization (JASCRAC stands for The Japanese Society of
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`Rights of Authors and Composers)
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`The Fox Agency International, Inc. (FAI) Mechanical Authorization
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`The Fox Agency International, Inc. (FAI) Synchronization Authorization
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`9.
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`Attached as Exhibit 59 is a true and correct copy of a Certificate of Registration
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`issued by the Department of State of the State of New York on October 31, 1991 for my
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`

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`logo which is a combination of “AppleJazz” and a depiction of an apple. The Certificate
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`states that the service mark is “Used in connection with a jazz festival, an event featuring
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`live music with various bands” and it was issued to Charlie Bertini.
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`10.
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`Attached as Exhibit 103 P4 is a renewal of a fictitious name from the Florida
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`Department of State for AppleJazz Records dated February 28, 2005 indicating that the
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`fictitious name was registered on October 23, 1995 and that its owner is Charlie Bertini.
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`11.
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`None of the APPLE JAZZ band members or any other person other than me has
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`ever claimed ownership in the mark APPLE JAZZ.
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`12.
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`I am the sole owner of the mark APPLE JAZZ and have been the sole owner since
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`I began to use it in commerce as early as June 5, 1985.
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`I declare under penalty of perjury under the laws of the United States that the
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`foregoing is true and correct.
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`November 4, 2018.
`
`/s/ Charles Bertini
`Charles Bertini
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91229891
`Serial No. 86659444
`Mark: APPLE MUSIC
`Filing Date: June 11, 2015
`Publication Date: May 10, 2016
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`_________________________________
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`CHARLES BERTINI,
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`
`
`Opposer
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`
`
`v.
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`
`APPLE INC.,
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`
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`
`
`Applicant.
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`
`
`
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`DECLARATION OF IRINA BERTINI FOR OPPOSER’S REPLY IN SUPPORT
`OF MOTION FOR SUMMARY JUDGMENT
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`
`I, Irina Bertini, hereby declare as follows:
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`1.
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`I work for my husband who is the attorney for Opposer Charles Bertini in
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`this proceeding. I make this Declaration based on my personal knowledge in
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`support of Opposer’s Motion for Summary Judgment. I am over the age of
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`twenty-one and competent to make this Declaration.
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`2.
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`Attached as Exhibit 150 is a true and correct copy of a Priority Action
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`issued in connection with trademark application of BLACK APPLE, Serial No.
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`76/447732 that I downloaded from the USPTO website on October 27, 2018.
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`The Priority Action for BLACK APPLE mark was issued on March 11, 2003 and
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`states: “The examining attorney has searched the Office records and has found
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`no similar registered or pending mark which would bar registration under
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`Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).”
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`3.
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`Attached as Exhibit 151 are true and correct copies of webpages I
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`downloaded from the website www.allmusic.com on November 5, 2018.
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`4.
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`Attached as Exhibit 151 P3 shows that there were no Abbey Road
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`releases during years 1979-1986.
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`5.
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`Attached as Exhibit 151 P2 shows that there were no Let It Be releases
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`during years 1971-1986.
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`6.
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`Attached as Exhibit 151 P7 shows Cassette releases of All Things Must
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`Pass took place in 1970 and 1991. There were no releases during years 1978-
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`1986.
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`7.
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`In fact, according to Exhibit 151 there were no releases of any Beatles
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`albums on any label during years 1982-1986.
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`8.
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`Attached as Exhibit 149 is a true and correct copy of webpages from
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`www.wikipedia.com website that I downloaded on October 28, 2018. According
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`to Wikipedia, Apple Records released the All Things Must Pass album in 2000.
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`9.
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`According to Wikipedia, as a condition of a settlement of a lawsuit in 1981
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`between Apple Corps and Apple Computer, Apple Computer agreed not to enter
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`the music business. Attached as an Exhibit 152 are true and correct copy of
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`webpages from www.wikipedia.com website that I downloaded on September 1,
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`2016.
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`I declare under penalty of perjury under the laws of the United States that
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`the foregoing is true and correct.
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`November 7, 2018.
`
`/Irina Bertini/
`Irina Bertini
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91229891
`Serial No. 86659444
`Mark: APPLE MUSIC
`Filing Date: June 11, 2015
`Publication Date: May 10, 2016
`
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`CHARLES BERTINI,
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`
`
`
`Opposer
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`
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`v.
`
`
`APPLE INC.,
`
`
`
`
`
`Applicant.
`
`
`
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`DECLARATION OF JAMES BERTINI FOR OPPOSER’S REPLY IN
`SUPPORT OF MOTION FOR SUMMARY JUDGMENT
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`
`
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`
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`I, James Bertini, hereby declare as follows:
`
`1.
`
`I am the attorney for Opposer Charles Bertini in this proceeding. I make
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`this Declaration based on my personal knowledge in support of Opposer’s Motion
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`for Summary Judgment. I am over the age of twenty-one and competent to
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`make this Declaration.
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`2.
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`On September 19, 2018 a package from Applicant’s attorneys was left in
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`an unsecure area outside on the ground and next to the door of my home-office
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`by UPS when neither I nor anyone else was at home to receive them. I did not
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`make any agreement with Applicant’s attorneys to serve me with documents in
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`any manner other than that which is required by the TBMP.
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`3.
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`Not included in this package were documents responsive to Opposer’s
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`Requests for Production Nos. 4 or 5, and there was no privilege log. xxxxxxxxx
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`CONFIDENTIAL
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`xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
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`xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx]
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`4.
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`Attached as Exhibit 153 is a true and correct copy of Applicant’s Initial
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`Disclosures.
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`I declare under penalty of perjury under the laws of the United States that
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`the foregoing is true and correct.
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`November 7, 2018.
`
`/James Bertini/
`James Bertini
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`CONFIDENTIAL
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