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

[MacRumors]

Earlier this month, a court threw out Apple's false advertising claim against Amazon in the dispute over the "App Store" trademark, leaving unaddressed the question of trademark infringement. The two companies have been battling over the issue for nearly two years, with Apple claiming that Amazon's use of the "Appstore" name to describe its marketplace for Android apps infringes upon Apple's App Store name and causes confusion with consumers.

Bloomberg now reports that the two sides have been order to enter settlement talks over the alleged infringement in an attempt to resolve the dispute before it heads to trial later this year.

U.S. Magistrate Judge Elizabeth Laporte in San Francisco directed the companies to confer on March 21 and to bring their lead attorneys and people who have full authority to negotiate and settle the case, according to a court filing today. A trial is scheduled for August.

Apple is seeking a court order to block Amazon from using the term Appstore in its service to sell software for devices running Google Inc.'s Android operating system. Apple alleges the online retailer infringes its trademark and violates unfair competition laws.

Amazon has argued that the term "app store" is a generic one and that Apple should not have been preliminarily awarded a trademark on the name back in 2010. Apple originally filed for the trademark in 2008, but once the U.S. Patent & Trademark Office tentatively approved the application and published it for opposition in early 2010, Microsoft filed an objection, also arguing that the term was generic.

The trademark approval has remained in limbo, as Microsoft and Apple have agreed to postpone further debate in the process until the case between Apple and Amazon is resolved.

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

[DipDog3]

Sorry, but yes, "App Store" is generic. You can't trademark it.

I don't think anyone gets confused, they know you go to the app store to get apps regardless of what device it is on.

[drummingcraig]

Seems to me this is like Publix and Winn-Dixie arguing over who is allowed to use the title "grocery store".

[MMOTotal]

No this again..

Most of the time (personally) when I say "it's on the app store" they automatically think the store on iOS if it's something on Android I usually say the google store.

[samcraig]

Good. They should settle out of court and not take up the court's time.

Personally - I think there's no customer confusion. Especially with AmazonAppStore's logo and the fact that you can't install Android Apps on iOS and vice versa.

Further - and it's been my personal experience that very few people refer to Apple's App Store as the App Store. Most people I know say " hey - is that app on iTunes?" or "just download that app from iTunes" or some variant.

Regardless. App Store is generic. But I full expect this thread to be just like the one before it (when the first ruling came out) and every other thread which will devolve into a discussion of who used App first and who made it popular, etc. So in other words

SEE OTHER THREAD

[TouchMint.com]

Hopefully stuff like this stops but we know it wont...

[alexgowers]

I disagree the term 'appstore' is not generic at all.

It was almost never been used before apple decided to call it's programs for it's phones apps. There were many software stores online and many didn't shorten applications to apps at all! I mean come on just because it's simple doesn't mean there aren't other names, every other company has thought of something original to call their outlets with no issues.

I mean they could have called it appshop, softstore or any number of variations on a theme. Amazon are guilty of copying, now whether that is illegal is a whole different debate and that is presumably what the court wants answered. I think it's fine for amazon to call their store whatever they want but they have to admit they are copying to get customers in the door. Sadly for amazon their name is not synonymous with quality and I think apple feels they are misleading the public into believing they will get an apple like experience.

I also have to say apples app stores are still lacking after an initial revelation the usability hasn't improved and needs a massive rethink.

[bobringer]

Anybody else find it funny that Amazon is using the "generic" argument when it defended it's "one click shopping" patent so aggressively?

I understand each issue needs to be separate... but seeing that Apple still pays Amazon for the use of the most ridiculous of ridiculous patents... I suggest the same arrangement here. Amazon pays Apple for every purchase through the "appstore."

[samcraig]

Originally Posted by alexgowers

I disagree the term 'appstore' is not generic at all.

It was almost never been used before apple decided to call it's programs for it's phones apps. There were many software stores online and many didn't shorten applications to apps at all! I mean come on just because it's simple doesn't mean there aren't other names, every other company has thought of something original to call their outlets with no issues.

I mean they could have called it appshop, softstore or any number of variations on a theme. Amazon are guilty of copying, now whether that is illegal is a whole different debate and that is presumably what the court wants answered. I think it's fine for amazon to call their store whatever they want but they have to admit they are copying to get customers in the door. Sadly for amazon their name is not synonymous with quality and I think apple feels they are misleading the public into believing they will get an apple like experience.

I also have to say apples app stores are still lacking after an initial revelation the usability hasn't improved and needs a massive rethink.

Well you're wrong on several points. See other thread...

[Joesmith13245]

This is ridiculous. People wonder why Apple charges so much for their products. I bet Apple's legal division is as large as their R&D group.

btw, its not just Apple. Many other corporations spend too much time litigating vs. innovating.

This needs to stop.

[a.gomez]

Yeah... I hate every time I go to a "Gas Station" and I find out it is not Exxon... I know it says BP on the sign but the Gas Station is there - so confusing.

[LagunaSol]

Originally Posted by alexgowers

I mean they could have called it appshop, softstore or any number of variations on a theme. Amazon are guilty of copying

Amen. Either Amazon was just plain lazy (doubtful) or they are intentionally trying to piggyback off the popular branding of Apple's App Store while feigning innocence. I love Amazon, but this was a lame move.

----------

Originally Posted by a.gomez

I know it says BP on the sign but the Gas Station is there - so confusing.

I don't know where you buy gas, but I never see the words "Gas Station" on a gas station's sign. So it's not confusing...because it's not actually there.

[MacBoobsPro]

They could trade mark it if they said 'app' was short for Apple. As in AppleStore. Then they would have a case.

I think its stupid that they are told to 'talk it over' nothing will come of it thats why they are already at this stage is it not?

[Popeye206]

Hummm.... sure... I remember the word "App" before 2008 being used here and there in the industry, but the term "AppStore" was unique to my knowledge when Apple came out with the AppStore. Sure, it's common now because everyone loved it and started using it, but does not mean Apple does not have a right to try and defend it.

But trademarks and patents seem to be worthless anymore. No company seems to respect either unless their forced to by the courts.

[amptech]

:AND OUT OF THE SHADOWS:

Palm bursts through the court room doors exclaiming, "THE CALENDAR, THE CALENDAR, WE HAD THE APP STORE FIRST."

"srsly though, PalmOS was awesome." - NoOne F. Ever

[Laird Knox]

Originally Posted by DipDog3

Sorry, but yes, "App Store" is generic. You can't trademark it.

I don't think anyone gets confused, they know you go to the app store to get apps regardless of what device it is on.

Originally Posted by samcraig

Personally - I think there's no customer confusion. Especially with AmazonAppStore's logo and the fact that you can't install Android Apps on iOS and vice versa.

Originally Posted by a.gomez

Yeah... I hate every time I go to a "Gas Station" and I find out it is not Exxon... I know it says BP on the sign but the Gas Station is there - so confusing.

Just Sunday I had somebody say to me "I finally broke down and bought a Windows iPhone." When he showed it to me it was an Andriod phone. Nope, no confusion there.

As long as people are involved there will be confusion.

[Mr. Gates]

Ladies and gentleman of the Jury, ...I'm just a cave man.

Sometimes when I get a message on my fax machine, I wonder, "did little demons get inside and type it?" I don't know. My primitive mind can't handle these things.


But even I can clearly see that App store is as generic as Shoe Store or Bike shop or Natural food Store.

I rest my case your honor.

[Melodious Thunk]

Kleenex is a household name, but Procter and Gamble still has to call their product "Puffs." Why does amazon get the exception?

[kitsap2]

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.

[Stella]

Go to court - get the question of 'App Store' trademark over and done with. If Apple loses the "App Store" trademark case, then there's nothing to settle.


The word 'App' has been around far longer than the iPhone. Apple didn't invent the term "App". But I don't think this is particularly relevant to the trademark of App Store.

Originally Posted by kitsap2

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.
<snip>

[bsolar]

Originally Posted by alexgowers

I also have to say apples app stores are still lacking after an initial revelation the usability hasn't improved and needs a massive rethink.

The key words are "apples app store". If the trademark is distinctive you don't need to specify the vendor, but you had to. You specified that you are talking about Apple's App Store to avoid confusion with alternative app stores. If such confusion is possible the trademark has become generic.

It doesn't matter who used the trademark first or how much is original. "Thermos" was clearly original and a perfectly valid trademark, but with use the term became a generic word to describe *any* vacuum flask, including those not necessarily maufactured by Thermos GmbH. And the trademark was lost.

[Apple Key]

To me, before Apple came out with the App Store, they were called applications, and not apps. Yes, it is a shortened version of the word, but I do believe most people think of Apple when they think of the App Store. Therefore they should be entitled to the trademark.

[Michael Scrip]

Originally Posted by DipDog3

Sorry, but yes, "App Store" is generic. You can't trademark it.

I don't think anyone gets confused, they know you go to the app store to get apps regardless of what device it is on.

I think it's generic too. And it really shows Apple's lack of creativity when coming up with a name for their app store.

But wait... doesn't Amazon have the same lack of creativity too? I mean... "appstore" isn't even a word. They just took out a space.

At least the other guys made an attempt to come up with a more creative name:

Google Play Store (formerly Android Market)
Palm App Catalog
Nokia Ovi Store
Blackberry App World
Windows Phone Store (formerly Windows Phone Marketplace)

[samcraig]

For those that are criticizing Amazon for being lazy and using a "proof point" that they are trying to fool/confuse the customer let me ask you this.

What difference does it make? You can't install an Android App on an iPhone and vice versa.

And I know this isn't the issue - but what revenue is Apple losing if another vendor has an app store. None.

I think I'm bowing out of this thread now though. It's already a retread of the other friend with people continuing their reconstructed version of history.

[everything-i]

Originally Posted by alexgowers

I disagree the term 'appstore' is not generic at all.

It was almost never been used before apple decided to call it's programs for it's phones apps. There were many software stores online and many didn't shorten applications to apps at all! I mean come on just because it's simple doesn't mean there aren't other names, every other company has thought of something original to call their outlets with no issues.

I mean they could have called it appshop, softstore or any number of variations on a theme. Amazon are guilty of copying, now whether that is illegal is a whole different debate and that is presumably what the court wants answered. I think it's fine for amazon to call their store whatever they want but they have to admit they are copying to get customers in the door. Sadly for amazon their name is not synonymous with quality and I think apple feels they are misleading the public into believing they will get an apple like experience.

I also have to say apples app stores are still lacking after an initial revelation the usability hasn't improved and needs a massive rethink.

What's at question is the term 'app' used as a contraction of application. While this was rarely used in the media before Apple called their phone applications 'apps' it was used extensively in the software development community before this. One notable use of the term was by bill gates years ago when referring to popular applications as killer apps. This at least shows that the term was in use long before Apple filed the trade mark.