James Bertini

Trademark and real estate lawyer, urban homesteader

[James Bertini @JamesBertiniTM]

A CA fed court gave my client/brother permission to proceed w/ a fraud claim to cancel APPLE Reg. No. 4088195 in Cl 41 for entertainment svcs, e.g streaming. My brother began using APPLE JAZZ since 1985, but the USPTO says it conflicts with later marks! https://t.co/m1luSgw5Pz

[James Bertini @JamesBertiniTM]

Great news. CA federal court allows my brother’s case to cancel APPLE Reg. No. 4088195 to proceed. We seek to register his TM APPLE JAZZ, but the USPTO objects, despite its use since 1985. Already a diff fed court canceled the app to register APPLE MUSIC. https://t.co/BNyyqnBQjm

[James Bertini @JamesBertiniTM]

We appealed, but Apple didn't want to go to appeal so they used an arcane law to force me to start a new trial, from scratch, in a fed dist ct, which is much more work for a solo than an appeal. We filed in CA and alleged nonuse and fraud in procurement. https://t.co/tDLHuyPJGw

[James Bertini @JamesBertiniTM]

The TTAB dismissed our bid to cancel APPLE 4088195, necessary to register my client’s APPLE JAZZ from 1985. They previously dismissed our case to cancel APPLE MUSIC, which was then reversed by the Federal Circuit on appeal. Once again, we will appeal. https://t.co/OyYXiDP2vK

[James Bertini @JamesBertiniTM]

Federal Circuit denies our petition for mandamus, BUT states "we expect [a decision by the TTAB] will be issued promptly." We allege that Apple never used the mark. It's been THREE YEARS since trial. The TTAB really doesn't want to decide this case. https://t.co/lI3tqEVL8R

[James Bertini @JamesBertiniTM]

USPTO response to my mandamus seeking a Federal Circuit order to decide my client's case, sitting for three years, when other cases are decided in ten weeks. https://t.co/6HCC2wEWbS

[James Bertini @JamesBertiniTM]

@freelancelawmom In a perfect world, untouched by judicial bias & incompetence, this would work. But in my experience judges ignore what I say so often that I do overkill. PS every time this happens, I get their decisions reversed, which supports my overkill a fortiori.

[James Bertini @JamesBertiniTM]

Federal Circuit told USPTO to respond to my mandamus request. They have been sitting on a decision for nearly 3 years when policy is 10 weeks! My client cannot register his 1985 APPLE JAZZ b/c PTO claims a likelihood of confusion with the 2011 APPLE. https://t.co/ckNkRRhPcT

[James Bertini @JamesBertiniTM]

Another win by a sole practitioner against a giant company. From attorney Morris Turek: BIG WIN! Yesterday, the TTAB dismissed with prejudice a trademark opposition filed by Monster Energy against my client's trademark application for DARK DECEPTION: MONSTERS & MORTALS.

[James Bertini @JamesBertiniTM]

IP Watchdog today covers our APPLE MUSIC case again: "APPLE JAZZ Mark Owner Says Apple Can’t Attempt to Reverse CAFC via TTAB". https://t.co/S5ukDfyNm4

[James Bertini @JamesBertiniTM]

Apple's Petition for Rehearing its loss in the APPLE MUSIC case was denied by the Federal Circuit Court of Appeals.

[James Bertini @JamesBertiniTM]

Great article about Apple in Wired, but surprised you didn't mention that a jazz musician cancelled the TM application for APPLE MUSIC two months ago@gabgr

[James Bertini @JamesBertiniTM]

@TudorsAndTMs Thanks for posting this. The reporter says that Apple can "intimidate people" from exercising their TM rights, and mentions 2012 and 2015 cases where they lost, but doesn't mention an April 2023 case in which a sole proprietor cancelled the trademark application for APPLE MUSIC.

[James Bertini @JamesBertiniTM]

IP Watchdog on my 2nd Apple case explains that despite TTAB statements that trials and motions are decided in 12 weeks, they have not decided my trial ending 2/23/21 or mtn reconsider made 2.17.22. Bertini claims “appearance of bias in favor of Apple.” https://t.co/JMZbAmjskB

[James Bertini @JamesBertiniTM]

Apple filed a Petition for Rehearing their loss in the Federal Circuit which effectively cancelled the application to register Apple Music as a trademark. According to the Fed Cir, "petitions for rehearing are rarely successful." Appearing is law firm #3 with lawyers #13 and 14.

[James Bertini @JamesBertiniTM]

WSJ Mike Cherney reports Australian football name Tasmanian Devils conflict with Warner Bros. trademark rights. IP lawyer Dave Stewart says it would be hard for the company to have a monopoly on a real animal. I think no one should privatize common English words. @Mike_Cherney

[James Bertini @JamesBertiniTM]

@TTABlog Also, I filed a Request for Reconsideration of the suspension in Feb 2022. The Chief Judge repeatedly informs the public that motions are decided in 10-12 weeks. So...what is the reason this wouldn't this decided now for 15 months and counting???

[James Bertini @JamesBertiniTM]

Petition filed requesting Director to decide my client’s case to cancel APPLE Reg. No. 4088195. The TTAB has REFUSED to decide it for 27 months and counting, despite their claims to decide cases in ten weeks. This 2012 mark prevents registration of my client’s 1985 APPLE JAZZ.

[James Bertini @JamesBertiniTM]

@TTABlog Board's decision in Apple Music case stated Apple "was unable to establish its use of the mark... prior to Opposer’s 1985 priority date." Cancellation case is about whether the Apple '195 mark was or was not used in commerce.

[James Bertini @JamesBertiniTM]

@TTABlog I did that on April 4. But if the Chief Judge refuses to allow the case to be decided for 27 months, it is wishful to think he would lift the suspension.

[James Bertini @JamesBertiniTM]

Client cant reg’ster ‘85 APPLE JAZZ; PTO &Apl claim likelihood conf w ‘11 APPLE. We filed canx nonuse; trial over Feb ’21. Chief Judge Rogers won’t allow decide, so we filed Petition to Dir & followed their instructions. Today Apple opposed. Neither TTAB or Apl want case decided.