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Apr 12, 2001
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TechFlash reports that Microsoft has filed a motion (PDF) asking the U.S. Patent and Trademark Office to deny Apple's application for a trademark on the term "App Store", arguing that the term is a generic one that other entities should be free to use.
"Any secondary meaning or fame Apple has in 'App Store' is de facto secondary meaning that cannot convert the generic term 'app store' into a protectable trademark," write lawyers for Microsoft in a motion for summary judgment, filed yesterday with the Trademark Trial and Appeal Board. "Apple cannot block competitors from using a generic name. 'App store' is generic and therefore in the public domain and free for all competitors to use."
Microsoft notes that Apple's claims on the "App Store" term have forced its competitors to tweak references to their own stores, calling them "Application Stores" or "App Marketplaces". The company also references cases in which the courts have decided that companies may not "usurp a generic term" for trademark purposes if it would prevent competitors from adequately describing their own products.


094223-app_store_competitors.jpg

Microsoft also points to use of the generic term "app store" by the media, consumers, and even Apple CEO Steve Jobs himself in reference to non-Apple stores as evidence that the phrase is generic and should not be accepted as an Apple trademark.

Apple has been trying since July 2008 to convince the Patent and Trademark Office to grant a trademark on the phrase, with examiners initially denying the application under the rationale that the term is merely descriptive of the services offered by Apple. Apple appealed the decision a few months later, submitting a stack of evidence showing that the term had acquired distinctiveness in marketing materials and media coverage. In response, examiners tentatively decided to award Apple the trademark and published it for opposition in January 2010.

Microsoft signaled its opposition to the trademark approval in July of last year, and followed that up with the motion for summary judgment filed earlier this week in an effort to speed the dismissal of the trademark using the argument that generic terms can not be protected even if they have achieved notability.

Article Link: Microsoft Objects to Apple's 'App Store' Trademark Application
 

Xian Zhu Xuande

macrumors 6502a
Jul 30, 2008
904
82
Ehh... I can see why Apple would want to trademark it.
But I can see Microsoft's position as well.

Good for Apple. Go get 'em.
 

ZilogZ80

macrumors 6502a
Aug 5, 2010
551
0
There are many examples of trademarks that have become "generic terms", e.g. hoover (in the UK), coke (meaning any cola). Generally it points towards market dominance for the company concerned. Perhaps this is what Microsoft is conceding! :D
 

Hemingray

macrumors 68030
Jan 9, 2002
2,924
33
Ha ha haaa!
When you hear, "There's an App for that", who do you think of? I've always associated "app" with the file extension .app. But I also think that "app" has become pretty ubiquitous in the realm of consumers. I'm not so sure Apple will win this one.
 

Mike84

macrumors 6502a
Jun 23, 2010
814
132
I agree with Microsoft here. App Store has not acquired secondary meaning to be associated with Apple, and therefore, it is too generic, even from the get go it is too generic of a term.

So, yes, I think Apple should take a loss on this one and move on.
 

neuropsychguy

macrumors 68000
Sep 29, 2008
1,718
3,551
Yeah, Microsoft who trademarked Windows, Word, and other things is complaining against Apple for trademarking a word (not the trademarked version) that Apple essentially created. Almost no one was using app with regularity before Apple used it (Apple started in OS X with their .app packages). Besides, app could be short for Apple and not application. If anyone has claim over it, Apple does.
 

NebulaClash

macrumors 68000
Feb 4, 2010
1,810
0
I can't think of even one example of the usage "App Store" or "There's an App for that" before Apple started doing it. So while competitors such as Microsoft might be irritated that they didn't think of it first, Apple really was first. Microsoft wants to copy Apple now and is annoyed that they can't call their store an App Store. Sour grapes.

But if I were Microsoft, I would object too. That is what you do in trademark matters. If you don't, your competitor will win the argument.
 

RobQuads

macrumors regular
Jul 11, 2010
234
48
The fact that Steve Jobs has used the term to talk about other generic online application stores means IMO it will be quite an easy one and will go against Apple.
 

mentholiptus

macrumors regular
Sep 1, 2009
163
0
I don't recall any "App Stores" before Apple started calling their's "The App Store".

Others could call it a mobile software store, application store, etc.

We could block "marketplace", no? I'd say that's far more generic, as it applies to all markets.

The reason the press refers to them all as an "app store" is because that's what the first one was called, and it has a nice ring to it. Tough **** to everyone who didn't get there first.
 

Full of Win

macrumors 68030
Nov 22, 2007
2,615
1
Ask Apple
Talk about history coming back to bit one on the a--.




It's a rubbish point. Windows is not as used in the computer industry as 'App'

App has been, in general use, for the Mac OS. Windows used the term "Programs" in their ecosystem. (e.g. My Programs vs. Applications). In fact, I have NEVER heard anyone call a Windows program an 'Application'
 

DrKarl

macrumors member
Jun 6, 2010
57
46
Montana
Didn't Apple first use the term 'App'?

Obviously the TM office has to do the research, but my recollection is that nobody used the term "app" for "application" until Apple began doing so. They were called "programs" by Microsoft ... cannot remember MS ever using the word Application much less App...

They've already allowed the trademark for "There's an App for that" ... so how is "App Store" any different?
 

maflynn

Moderator emeritus
May 3, 2009
69,097
36,969
Yeah, Microsoft who trademarked Windows, Word, and other things is complaining against Apple for trademarking a word (not the trademarked version) that Apple essentially created. Almost no one was using app with regularity before Apple used it (Apple started in OS X with their .app packages). Besides, app could be short for Apple and not application. If anyone has claim over it, Apple does.

Agreed, but then its just business as usual, why not give a competitor headaches and issues if possible.
 

The Great Boony

macrumors regular
Nov 23, 2010
195
0
And "Windows", "Office", "Word", and "Access" are not generic terms? Microsoft has those trademarked. Sounds like the pot calling the kettle black.
Window is not a generic term in the computer industry at the time of trademark.

It’s a common word in a domestic sense.
 
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Mal67

macrumors 6502a
Apr 2, 2006
519
36
West Oz
Personally I could do with a little less app and a lot more app - lications in the store. But App store sounds too broad to me any way. Bit like milk bar, liquor store, newsagency etc.
 
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