Apple and Amazon Ordered to Enter Settlement Talks Over 'App Store' Trademark Issue

////////// Okay, time for some facts \\\\\\\\\\

Apple does NOT have official registration for the trademark for "App Store". Their application has been approved and published for opposition, but it's not finalized into a registration yet.

Of importance to this thread, it should be noted that their application was initially denied for being merely descriptive. From the USPTO database, here's the history:

• 2008 Jul - Apple applies for trademark
• 2009 Mar - USPTO denies trademark, stating: "REFUSAL - MERELY DESCRIPTIVE". (*)
• 2009 Sep - Apple switches tactics and amends application, now claiming Acquired Distinctiveness .
• 2009 Dec - use approved pending opposition
• 2010 Jan - published for opposition
• 2010 Jul - Microsoft files opposition
• 2011 ... evidence presented by both sides
• 2011 Nov - opposition hearing suspended pending outcome of Apple v. Amazon trial

And here we are, over a year later, still waiting for the trial to end and the USPTO to make their own final decision. You can view the opposition history here.

(*) "In this case, the mark APP STORE merely combines descriptive terms without creating a new non-descriptive meaning. ...

"The mark would be immediately understood as ... transmission of software from applications stores and/or repair/updating of software applications obtained from an applications store.

"The applicant’s own website demonstrates the descriptive significance of the term APP STORE in relation to the identified services.

"Accordingly, the refusal to register the mark under Section 2(e)(1) as merely descriptive of the services is maintained and made final.

- USPTO, 2009 Original refusal

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macsmurf said:

You're wrong. It was awarded to Salesforce.com. Apple used it without permission, but Marc Benioff decided just to give them the rights for free instead of making a big thing out of it.

http://thenextweb.com/apple/2011/08...n-and-trademark-to-steve-jobs-as-a-thank-you/

The problem with arguing in support of Apple is that they did exactly what Amazon did.

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OK The article you linked explains that Benioff transferred the trademark to Apple without litigation. But he had one in place; Apple took an existing trademark. At the point that Amazon comes in, Apple owns it, no?


So what I'm getting from others here (I haven't looked up trademark law) is Benioff shouldn't have had the App Store trademark either.

But unlike the situation with Amazon, Benioff did not have an existing, functional, & trademarked app store. He owned the rights to the name and the domain. (This is what I gather from the article). Amazon knew Apple had "App Store" and used the name anyway.

Regardless, I think it is all business strategy. I don't think anyone is absolutely wrong here; I do recall Apple doing something similar with the term iPhone and iOS. It's all a game, but it seems to me that were doing a lot of player hating here instead.

kdarling said:

[*]2011 Nov - opposition hearing suspended pending outcome of Apple v. Amazon trial

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Shouldn't it be the other way around ? The trial getting a stay until the USPTO has rendered their decision as to whether or not the trademark is valid ?

What good is holding a trial for a trademark that has so much uncertainty hanging over it ? Waste of time and money for everyone involved...

I really don't get the USPTO sometimes.

Anyway kdarling, thanks again for a wonderful post highlighting all the bullet points that have already been discussed, let's hope a few posters actually read your words and stop arguing against the facts here.

KnightWRX said:

Shouldn't it be the other way around ? The trial getting a stay until the USPTO has rendered their decision as to whether or not the trademark is valid ?

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Yes, it's a wonderfully circular legal mess, something that Apple's lawyers excel in. Sometimes a judge will even point out this particular tactic.

Here, I think that Apple thought that their trademark was likely to be denied due to opposition (just as their attempt to trademark "Multi-Touch" was), so they started a diversionary attack on Amazon, hoping that if they won there, the USPTO would be more prone to allow their registration to proceed.

KnightWRX said:

Shouldn't it be the other way around ? The trial getting a stay until the USPTO has rendered their decision as to whether or not the trademark is valid ?

What good is holding a trial for a trademark that has so much uncertainty hanging over it ? Waste of time and money for everyone involved...

I really don't get the USPTO sometimes.

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That has me bemused too.

Then again, I'd have thought there should be no trials regarding any trademark until it's finalised.

1) Apple shouldn't fight for trivial things like that.
2) Everybody started using the word "Apps" after Apple start focusing on it.

Even if you want to start yelling "Apple wasn't the first using APPS!!!" Argument. Apple was the one that make popular that word.

I've been using Macs and Apple products since 1992. I believe the word we used was "Programs".

That's a fact.

Legal fight for that? HELL NO.

pacalis said:

My goodness man. I'll try this again. Isn't it obvious? They called it an app store because it is an app store.



Should I explain this one too? You said I was mean and then you called me pathetic and weak.

OK, so I don't PRETEND that I'm superior...

But the main point that MANY have made is that trademarks have different rules, different intentions and different history than patents and copyrights.

If they were the same rules you wouldn't need a different name for them.

With that, if a trademark enters into common use it can be lost. So if the general public thinks app store isn't AppStore, it doesn't matter who was first with the mark.

But also, trademarks are far more defensible if they are non-descriptive. The idea is to protect an investment in the mark, not to allow a company to capture common the language to their advantage (Xerox vs. copies, Coke vs. cola). So trademarks that are descriptive can be challenged on fair-use and free speech grounds.

ie. you don't want Apple suing some small developer for trademark infringement because they say they want to sell their app in a store

Click to expand...

Thanks for the explanation. It seems that this issue is way more complicated than I had anticipated.

In my mind, the issue was supposed to be simple: you own a trademarked name (whatever it is). At that point you should be good to go, or the the trademark should have been rejected and you had to pick a different one. Everyone else has to use a different name than you trademarked. Done. It seems wrong to me to have a trademark revoked after it has been approved and you've been operating for a while. I mainly blame whoever granted the trademark in the first place for this issue. I concede, at this point the term "app store" is generic. But was it really that common a term when Apple started using it? I can't be sure.

While I understand that it is not as simple as I mention above, it seems to me that it should be. Again, why can't everyone else pick another synonym for "store" and avoid this issue altogether? Is it really worth the litigation, for this particular product? I just don't understand Amazon's reasoning with regards to the business case of naming their app store, well, app store, when they know someone already trademarked that name. If I'm naming something, I should just have to look up what's already out there and pick something else.

PD. I was not calling you pathetic and weak. I was calling the act of bashing others pathetic and weak. I apologize if it came across that way. I concede that you "insulted" my post initially, not me. I guess that's how it goes with written communication.

I just feel that the anger is unnecessary in forums like this one and the tone takes a personal and negative turn far too quickly and regularly by some posters.

Now, on with the show!

EDIT: So Apple doesn't own the trademark? (per kdarling's post). So, what did Apple acquire from Benioff? Argh! I give up. Back to IDGaF mode: Let them settle it, put out cool products, me happy.

I WAS the one said:

I've been using Macs and Apple products since 1992. I believe the word we used was "Programs".

That's a fact.

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It is ? How come then :





The fact, the real fact, is that we've been using "Program", "Application" and "Software" intercheangebly forever in the short life of computing. There is no absolutely truth here as to who coined the term, and let me tell you one thing, it wasn't in the 90s or 80s. All these terms existed prior to Apple and Microsoft even being registered as companies or ideas in the minds of Gates or Jobs or Wozniak or Ballmer or Allen.

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melendezest said:

EDIT: So Apple doesn't own the trademark? (per kdarling's post). So, what did Apple acquire from Benioff? Argh! I give up. Back to IDGaF mode: Let them settle it, put out cool products, me happy.

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As soon as you file for a trademark, you need to start actively defending it. That is one of the rules of trademarks, you must show that in trade, consumers and other potential buyers associate the mark you're trying to register to you and you only.

Since we're repeating the last thread... this seems appropriate

https://www.youtube.com/watch?v=qQGgaI-BcI4

kdarling said:

Apple does NOT have official registration for the trademark for "App Store".

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While you're here, what's your take on Apple's listing of the multi-touch trademark on their legal page even though the decision is now final and the mark abandonned :

http://ttabvue.uspto.gov/ttabvue/v?...name=Multi-touch&pop=&pn=&pop2=&pn2=&cop=&cn=

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samcraig said:

Since we're repeating the last thread... this seems appropriate

https://www.youtube.com/watch?v=qQGgaI-BcI4

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Is that city slickers and the VCR bit ? God damn I love that skit.

I WAS the one said:

1) Apple shouldn't fight for trivial things like that.
2) Everybody started using the word "Apps" after Apple start focusing on it.

Even if you want to start yelling "Apple wasn't the first using APPS!!!" Argument. Apple was the one that make popular that word.

I've been using Macs and Apple products since 1992. I believe the word we used was "Programs".

That's a fact.

Legal fight for that? HELL NO.

Click to expand...

So what? Why does everyone seem to think that the USPTO is a jury in a popularity contest?

melendezest said:

EDIT: So Apple doesn't own the trademark? (per kdarling's post). So, what did Apple acquire from Benioff?

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Good point. His claim (after Jobs is dead and unable to respond) seems to have a few holes in it. Let's check:

• Everyone go to http://www.uspto.gov/trademarks/index.jsp
• Click on TESS search trademarks
• Choose Basic Word Mark Search
• Type in "appstore" (one word), then Submit Query
• The second result is SAGE. Click the first one to see Salesforce's.

Okay, now let's look at its history.

• Click the blue TDSR button
• Click Documents tab
• Click the Nov 20,2006 outgoing document.

Hey, it was initially denied to Salesforce, just as later happened to Apple! "The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services."

Go back to the documents. Notice that Salesforce then appealed and finally was approved in August 2008 pending notice of publication.

• Go back to your first Salesforce page.
• Click the blue TTAB (Trial and Appeal Board) Status button.

Wait a second. Someone filed an opposition to the trademark in 2008! Who would do that?

Yes, it was Apple. They filed an opposition. Unfortunately, we can't see what they claimed in their opposition. That would sure be interesting.

Shortly afterwards, in Dec 2008, Salesforce voluntarily abandoned their trademark. There's no record that they assigned it to Apple. He might've offered it, but Apple didn't take or buy it.

KnightWRX said:

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Is that city slickers and the VCR bit ? God damn I love that skit.

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It is indeed... love it too. In fact - I love the whole movie.

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You realize, of course, that if people can't be bothered to read a few posts up from the one they are about to post in - there's no chance in hell they are going to do the steps below

kdarling said:

Good point. His claim (after Jobs is dead and unable to respond) seems to have a few holes in it. Let's check:

• Everyone go to http://www.uspto.gov/trademarks/index.jsp
• Click on TESS search trademarks
• Choose Basic Word Mark Search
• Type in "appstore" (one word), then Submit Query
• The second result is SAGE. Click the first one to see Salesforce's.

Okay, now let's look at its history.

• Click the blue TDSR button
• Click Documents tab
• Click the Nov 20,2006 outgoing document.

Hey, it was initially denied to Salesforce, just as later happened to Apple! "The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services."

Go back to the documents. Notice that Salesforce then appealed and finally was approved in August 2008 pending notice of publication.

• Go back to your first Salesforce page.
• Click the blue TTAB (Trial and Appeal Board) Status button.

Wait a second. Someone filed an opposition to the trademark in 2008! Who would do that?

Yes, it was Apple. They filed an opposition. Unfortunately, we can't see what they claimed in their opposition. That would sure be interesting.

Shortly afterwards, in Dec 2008, Salesforce voluntarily abandoned their trademark. There's no record that they assigned it to Apple.

Click to expand...

kdarling said:

Yes, it was Apple. They filed an opposition. Unfortunately, we can't see what they claimed in their opposition. That would sure be interesting.

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So Apple opposes it when others try to get it, but then try to get it for themselves. Even better!

Their opposition probably went a little something like :

"Duh, Microsoft uses Programs, Apple uses Applications".

KnightWRX said:

So Apple opposes it when others try to get it, but then try to get it for themselves. Even better!

Their opposition probably went a little something like :

"Duh, Microsoft uses Programs, Apple uses Applications".

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I sincerely wouldn't be surprised if Apple (more likely Steve) went "thermonuclear" after the original fallout between Jobs and Gates. So much so that Steve never got over it. He probably did everything he could to patent, trademark, etc anything and everything he could. And I mean EVERYTHING.

His whole response in his bio to Android (and Google) as I said back when the statement came out seems to be deep seeded psychologically. I'm not a psychologist - but I don't think you need to be one to see that it brought back up every painful memory of Gates/Microsoft.

samcraig said:

You realize, of course, that if people can't be bothered to read a few posts up from the one they are about to post in - there's no chance in hell they are going to do the steps below

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Yes, many will not. But some will.

I believe in the adage, "teach a man to fish".

kitsap2 said:

In the Microsoft world, "Applications" were known as, "Programs". Apple has always called its, "programs", Applications.

Apple truncated the word, applications, to, App. Then called their new, smaller (file size) applications for iPhone, Apps. Then filed for trademark status of that name, in The App Store.

Microsoft would, theoretically, call their program/s, Prog/s. And hence, The Prog Store. Doesn't sound quite that nice rolling off the tongue, but it would make sense.

Amazon couldn't come up with their own nifty name, so they just "borrowed" Apple's name for their store. Maybe Amazon should have called their store, The DroidApp Store, Drapp Store, Roid Store, The Amazon Store for Little Programs to Run on Android Platform Phones Store.

Just my early morning thoughts. No legal eagle here.

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For a really long time (and still), if you list files on details Mose, you will find Windows programs called Windows applications. That among MANY other places in the Windows operating system.

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I WAS the one said:

1) Apple shouldn't fight for trivial things like that.
2) Everybody started using the word "Apps" after Apple start focusing on it.

Even if you want to start yelling "Apple wasn't the first using APPS!!!" Argument. Apple was the one that make popular that word.

I've been using Macs and Apple products since 1992. I believe the word we used was "Programs".

That's a fact.

Legal fight for that? HELL NO.

Click to expand...

If by we you mean you and the people you know, Ok, but of you mean all Mac users from then, you're dead wrong.

Morshu9001 said:

If you look up the word "application", it has many different meanings.

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You might even say it has many different applications.

MacDav said:

There's no question that Amazon can use the generic term "AppStore". The real question is: Why did they choose to use unoriginal terminology that was already in use by Apple. It seems to me they would have wanted to use something more original. The list is long and easy to come up with.
1. AppStop
2. AppPLace
3. AppShop
4. AppCorner
5. AppNook
6. AppStuff
7. AppThis
I could go on and on, but the point is why not come up with something original instead of the easy and obvious?

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Just a guess here but I would think they used unoriginal and descriptive terminology to make it simple and easy for people understand exactly what their new service was. As I recall when it first started most marketing and articles I read about it consistently referred to it as The Amazon appstore for Android.

RiverCitySlim said:

Just a guess here but I would think they used unoriginal and descriptive terminology to make it simple and easy for people understand exactly what their new service was. As I recall when it first started most marketing and articles I read about it consistently referred to it as The Amazon appstore for Android.

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It's still called "Appstore for Android".
Anyone thinking this will work for their iPhone needs serious help.

kdarling said:

There's no record that they assigned it to Apple. He might've offered it, but Apple didn't take or buy it.

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I stand corrected.

Interesting stuff.

KnightWRX said:

No! Applications was not always a Mac thing, it's a word used to describe software in computing, has been since the 1960s. Do I need to AGAIN, post the cover to that 1960 book titled "Computer Applications" ?

Yes I do it seems.

Image

People, read the thread. These images have been posted over and over and over again.

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And Amazon is a rain forest. Android is a robot with a human appearance. What's your point? You obviously don't understand trademarks.

Apple needs to stop litigating and get back to innovating.

I wonder how many Amazon defenders here have a problem with the Microsoft Office brand. Probably none. If Google changed the name of its productivity suite to Google Office, MS would be all over them like flies on poo.

Amazon could have used an ounce of creativity to come up with something different than AppStore. They chose not to. Sad.

slffl said:

And Amazon is a rain forest. Android is a robot with a human appearance. What's your point? You obviously don't understand trademarks.

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Okay. Then explain it to him. Why is Apple valid? What about Pages? Or hey, Windows? Let's throw in Office for good measure?

Why are these allowed, yet App Store isn't?

Until you figure this out, you have absolutely no room to claim someone doesn't understand trademarks.