Amazon Responds to Apple's Trademark Lawsuit Over 'App Store'

Spoony said:

ding ding ding. I agree.

The store is called the App Store. You can't copy someones store name.

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Yes you can... to a certain extent.
Two stores can be named the same if the name is generic in nature.

Apple didn't create the word "App Store". This has been proven in many threads about this very topic.
They popularized it and then went so far as to even give it generic meaning.
Steve did that himself. Now he's trying to lay claim to it after the fact.
Will he win... who knows.

But nothing is as black and white as many claim to believe it is.
Trademark law is complicated.

ten-oak-druid said:

Your point is that you cannot find such a trademark as "app store" in the standard character format because "app store" is too general right? The other person posted that "pet store" would be a ridiculous example of this.



Ok fair enough. Pet store was registered in the stylized or design format.

But your basic argument against Apple is that they cannot use app store as a trademark in the broader text format because it is too general. But this is not the only example of such a thing.

If this is the case then Apple Store will be thrown out too. It is the same type of trademark. Two words, not one and not preceded by "the".

App Store
Apple Store

The other argument is that "app" is too generic and that the term was around prior to the trademark. I do not believe this is valid either as "app" may have existed but was not widely used. The argument would have been used agains the prior trademark of "appstore" in that case.

One thing is for sure. Our opinions will have no bearing on the final outcome.



You define the lexicon of the overall society?

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I think you are missing the point:

"What are some other reasons for refusing registration?

Registration may be refused if the mark is:

• Descriptive for the goods/services;
• A geographic term;
• A surname;
• Ornamental as applied to the goods"


Source: http://www.uspto.gov/trademarks/basics/BasicFacts_with_correct_links.pdf


App Store is descriptive of what it does. In other words, it sells apps or applications. Therefore, it cannot be trademarked. Apple can use it if they want, but so can anyone else doing the same thing.

This is pretty much saying that Microsoft is going to trademark Operating System. Both Microsoft and Apple make operating systems. What Windows is is a type of operating system. Windows does not describe the product.

Example:

Shop that sells windows cannot trademark "Window Seller" because it describes precisely what the shop does. It is generic + descriptive = no trademark.

At the end of the day, I believe this is going to court.

I think the heart of the case will be hinged on proving if "app store" and/or "appstore" was in common use before apple applied for the TM. It does not matter in the least what "app" is short for, or what it means, or who used it for what. Only "appstore" or "app store."

If they were to concede it was unique, but argue that it is NOW generic, I'd think they'd lose, (because Amazon and Microsoft seem to be ones generalizing it.)

If you guys can't differentiate between the use of "application" or "program" and "app store" vs "appstore" then I'm clearly wasting my time haha.

An FYI to the author of the article. You do not file a "counterclaim" seeking dismissal. Counterclaims are claims or causes of action against the original filer of the lawsuit. One files a motion seeking dismissal or files an answer that indicates they will eventually seek dismissal.

well we all know who really controls the goverment and everyone involved ... companies. so whoever throws more money at them is obvs gonna win

logandzwon said:

At the end of the day, I believe this is going to court.

I think the heart of the case will be hinged on proving if "app store" and/or "appstore" was in common use before apple applied for the TM. It does not matter in the least what "app" is short for, or what it means, or who used it for what. Only "appstore" or "app store."

If they were to concede it was unique, but argue that it is NOW generic, I'd think they'd lose, (because Amazon and Microsoft seem to be ones generalizing it.)

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Microsoft already made their opposition known in the USPTO's opposition phase for Apple's trademark application. This will go to court sooner than Amazon/Apple does.

This debate made me think of this. Now that I've thought about it more this is actually really interesting. Reminds me of Kleenex, or Xerox. Name becomes famous with what it does and becomes generic. I know this is different but made me think of it.

Once trademarked generic words include:

zipper
laundromat
escalator
Asprin
Heroin
yo-yo
Thermos
etc... goes on and on.

http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks

http://en.wikipedia.org/wiki/Genericized_trademark

Mike84 said:

I think you are missing the point:

"What are some other reasons for refusing registration?

Registration may be refused if the mark is:

• Descriptive for the goods/services;
• A geographic term;
• A surname;
• Ornamental as applied to the goods"


Source: http://www.uspto.gov/trademarks/basics/BasicFacts_with_correct_links.pdf


App Store is descriptive of what it does. In other words, it sells apps or applications. Therefore, it cannot be trademarked. Apple can use it if they want, but so can anyone else doing the same thing.

This is pretty much saying that Microsoft is going to trademark Operating System. Both Microsoft and Apple make operating systems. What Windows is is a type of operating system. Windows does not describe the product.

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You make it sound as though this is such an obvious distinction that Apple could never get a trademark for "app store". But apparently this argument is not so strong in trademark law as Apple actually has the trademark already. If that were not the case how could they sue another entity for trademark infringement?

I think all of you who believe you have trademark law all figured out should keep this in mind. Apple has a trademark for app store. Previously another company had a trademark for "appstore" which is very similar.

You can write about the topic as though you have it all figured out but clearly your interpretation is not definitive as Apple was awarded the trademark.

Now perhaps eventually apple will lose it or have to modify it but the fact that they got the trademark and a legal battle would need to be waged for them to lose proves that your opinion of trademark law in this case is oversimplified.

Therefore, it cannot be trademarked

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It was.

Spoony said:

This debate made me think of this. Now that I've thought about it more this is actually really interesting. Reminds me of Kleenex, or Xerox.

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This has nothing to do with the current case.

Spoony said:

...

The store is called the App Store. You can't copy someones store name.

...

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Yes you can, that's why you trademark your name. If it is trademarked you cannot copy someones name. If it is not, you can. Doesn't make it right, but that is the way it works.

ten-oak-druid said:

You make it sound as though this is such an obvious distinction that Apple could never get a trademark for "app store". But apparently this argument is not so strong in trademark law as Apple actually has the trademark already. If that were not the case how could they sue another entity for trademark infringement?

I think all of you who believe you have trademark law all figured out should keep this in mind. Apple has a trademark for app store. Previously another company had a trademark for "appstore" which is very similar.

You can write about the topic as though you have it all figured out but clearly your interpretation is not definitive as Apple was awarded the trademark.

Now perhaps eventually apple will lose it or have to modify it but the fact that they got the trademark and a legal battle would need to be waged for them to lose proves that your opinion of trademark law in this case is oversimplified.




It was.

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Can you please show me the trademark that was granted to Apple for App Store by the USPTO? You won't be able to find it because their trademark has not been approved. An opposition to their application was filed, if you didn't catch that from the text.

Trademark is having property rights in a trade name. Apple, or any other company, can file to protect a trademark they have been using and the USPTO decides if it is too generic to be an actual trademark. I suggest you learn about the process of how trademarks.


"How does a mark qualify for federal registration?

To register a trademark with the PTO, the mark's owner first must put it into use " in commerce that Congress may regulate." This means the mark must be used on a product or service that crosses state, national or territorial lines or that affects commerce crossing such lines--for example, a catalog business or a restaurant or motel that caters to interstate or international customers. Even if the owner files an intent-to-use (ITU) trademark application (ITU applications are discussed in the previous set of questions), the mark will not actually be registered until it is used in commerce."

Source: http://www.inc.com/articles/1999/10/14646.html


Also, take a look at the Lanham Act, which is pretty important when it comes to trademark law

http://en.wikipedia.org/wiki/Lanham_Act <-- particularly Subchapters I and II.

Just because you use a mark does not mean you have been granted the trademark rights in it.


So, as you can see Apple does not have the trademark to App Store. Therefore, your argument fails on that premise alone.

rjohnstone said:

Yes you can... to a certain extent.
Two stores can be named the same if the name is generic in nature.

Apple didn't create the word "App Store". This has been proven in many threads about this very topic.
They popularized it and then went so far as to even give it generic meaning.
Steve did that himself. Now he's trying to lay claim to it after the fact.
Will he win... who knows.

But nothing is as black and white as many claim to believe it is.
Trademark law is complicated.

Click to expand...

I've read through everone's comments and thought about it more and now I'm undecided. I see both sides and both points.

I get it "Pet Store" "Computer Store" etc.. "App Store"

Yes app is an old word, yes it is generic.
That being said no one outside computer people used that word. "App" won word of the year for 2010 b/c of apple.

So not sure but... If apple loses this that would be very frustrating for them. They created something, poured millions of dollars into advertising it "there's an app for that" and everyone else just gets to rise with their tide.

I'd say let microsoft and Amazon use the name if they both go on a month long ad blitz saying "we are going to copy apples app store name, although generic they made it famous and we are going to mooch off their success."

KnightWRX said:

This has nothing to do with the current case.

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If you read below i said it had nothing to do with the current case but made me think of it.

ten-oak-druid said:

...
It was.

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I believe they have filed for a trademark, but the USPTO has not issued it.

Microsoft, and now Amazon, are opposing the issuing of the trademark. If it is issued to Apple, Apple will most likely prevail against Amazon. If they are not issued the trademark, everyone will have an "App Store".

Wow some of you guys really ride Apple's jock huh? How the hell can you claim 'App Store' as non-generic?

MS and Amazon are clearly correct here. Apple should just pay their legal fees and move on.

Mike84 said:

I am a current law student who has concentrated in IP, particularly trademark law.

Can you please show me the trademark that was granted to Apple for App Store by the USPTO? You won't be able to find it because their trademark has not been approved. An opposition to their application was filed, if you didn't catch that from the text.

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It was my understanding that Apple filed in 2008 and got some level of approval in early 2011. I imagine it is analogous to a "patent pending".

I imagine this case will then bear on the final full approval of the trademark.

Apple should file for "The App Store" in the interim as well as "appstore". The latter is used by amazon.

ten-oak-druid said:

You make it sound as though this is such an obvious distinction that Apple could never get a trademark for "app store". But apparently this argument is not so strong in trademark law as Apple actually has the trademark already. If that were not the case how could they sue another entity for trademark infringement?

Click to expand...

NO... they do not "have it already".
It's still in the opposition phase. No registration has been granted.


Learn how to read TESS and understand the coding.

Apple is filing a preemptive lawsuit against Amazon.
This is perfectly normal for anyone who is going through the trademark process.
The lawsuit's merits will be determined by the outcome of the opposition phase from the USPTO.

Now step away from the keyboard.

Bigdaddyguido said:

Wirelessly posted (Iphone: Mozilla/5.0 (iPhone; U; CPU iPhone OS 4_3_1 like Mac OS X; en-us) AppleWebKit/533.17.9 (KHTML, like Gecko) Version/5.0.2 Mobile/8G4 Safari/6533.18.5)

How can it be generic if no one had one before apple created there's? Suddenly everyone calls their market place an app store. There've been digital stores for years, and none were app stores.

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Exactly. While "App Store" is a great term, I'm convinced that if Apple originally called it an "App Shop" that the Microsofts and Amazons would complain about that being a generic term too and want to use it.

I bet a lot of money is still gonna be spilled in this...

I think that these two quotes from Tim Cook during the last Apple quarterly call, put the nail in the coffin:

"We've got the largest app store ..."

"... iPhone's integrated approach is materially better than Android's fragmented approach, where you have multiple OSs on multiple devices with different screen resolutions and multiple app stores with different ... "

Since Apple itself uses the word generically, I don't see how anyone can argue that it's not.

Trademark status of "app store"

The government's site on trademarks lists the status as:

"Current Status: An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page. "

It was approved for use by apple:
"2010-07-07 - Opposition instituted for Proceeding

2010-02-04 - Extension Of Time To Oppose Received

2010-01-05 - Notice Of Publication E-Mailed

2010-01-05 - Published for opposition

2009-12-02 - Law Office Publication Review Completed

2009-12-01 - Approved for Pub - Principal Register (Initial exam)

2009-12-01 - Amendment to Use approved

2009-11-21 - Amendment To Use Processing Complete"

I believe Apple's ability to sue is based on the approval to use the TM even though the final trademark has not been fully granted.

http://tarr.uspto.gov/tarr?regser=serial&entry=77%2F525433&action=Request+Status

I remember stories claiming "tentative approval" of the app store back in early 2011. But the application history (some of which I posted above) does not have any items in 2011. Perhaps our legal experts can explain the source of these stories claiming "tentative approval early this year". Is that just a delay between legal filings and public announcements?

Here is what makes me think it's not generic and apple would/should win.

There have been other online stores that sell computer programs/applications before apple created the "app store" None of them used the word App in their store name.

Examples:

GetJar
MobileRated
Cellmania

Apple launches a store just like these but better and called the store "App Store"

July 10, 2009 Apple's "App Store launches". Pre this no online stores used the term "app"

Post apples launch other phone makers/OS systems start to scramble.

App Catalog = Palm
App World = RIM
Amazon AppStore = Amazon

Stores that didn't ride apples coattails

Android Market = Android
Ovi Store = Nokia
Windows Phone Marketplace = Microsoft.


If "app store" was so obvioius and generic why did no one call their store "App store" until apple did? This is like everyone that argues that the iphone is so generic with it's icons and screen. I mean so obvious. No it's not obvioius.

If it was obvious Netjar, Mobilerated, Steam etc.. would just say "App Store" instead of some other random word.

Even the unauthorized iphone Store Cydia doesn't use the word app in their store name. "Unauthorized App Store" "Rogue App Store"

App Store is apple.

Even Wikipedia's serach term "app store" goes to the apple "app store" page. if want other onlilne phone stores you need to go to the disambiguation section.

Consultant said:

"Amazon" is a generic term and should not be used for a store name.

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Apple, Mac, Macintosh are all generic terms and should not be a compant or product name.

Some for the name Windows for Microsoft.

kdarling said:

I think that these two quotes from Tim Cook during the last Apple quarterly call, put the nail in the coffin:

"We've got the largest app store ..."

"... iPhone's integrated approach is materially better than Android's fragmented approach, where you have multiple OSs on multiple devices with different screen resolutions and multiple app stores with different ... "

Since Apple itself uses the word generically, I don't see how anyone can argue that it's not.

Click to expand...

From Apple's perspective, they have largest app store and it is named "App Store".