Microsoft Objects to Apple's 'App Store' Trademark Application

[farmboy]

The point here is that "App Store" is generic, .........

No. The point is that it WAS NOT generic. Trademarks are issued for use in commerce, not personal speech. Show us one single commercial use of the words "App Store" to market computer software, prior to Apple's application for a trademark in 2008. Show us one single consumer use of the phrase, not to mention in the archives of geekdom, where you are all saying you used the phrase all the time. You're asserting that it was common. Prove it. That's the MS burden here. The fact that they can't say App Store after Apple has created a memorable catch-phrase is just too bad. I think both the facts and the law are against them.

App Mart. BuySoft. Applicator. App Kiosk. AppWeb. Stop being so lazy and come up with your own marketing, preferably not the group that did Zune or Kin.

The phrase "best buy" was widely used for many decades to describe many good deals in almost all consumer products, cars to dishwashers. The use of the phrase as a name for a retail electronics store was NEVER used before, and it was allowed, as it should have been. That didn't prevent Circuit City from selling electronics, or Tiger Direct, or B&H or whomever. All run by apparently smarter people than Microsoft.

 

[ericinboston]

Yeah, Microsoft who trademarked Windows, Word

It's Microsoft Windows and Microsoft Word and Microsoft Office. I don't see Apple App Store anywhere.

MS has a valid point. The term "app store" is very generic and implies a store that sells (software) applications.

 

[John.B]

Unfortunately, anyone here that agrees with Apple is doing only because it's Apple. If McDonald's tried to register the "Hamburger Restaurant" trademark, no person in their right mind would agree.

If McDonalds was the first to try and trademark "Burger Joint" or "Burger Place", I wouldn't have a problem with that.

For your "Hamburger Restaurant" restaurant analogy to hold up, Apple would have to be trying to trademark "Application Store", which obviously isn't the case.

Unfortunately, anyone here that disagrees with Apple is doing only because it's Apple.

 

[tbrinkma]

The X Window System disagrees with that affirmation. Released by MIT in 1984, a full year before Microsoft Windows 1.0, it is a use of the word Window in the computer and technology before Microsoft "invented" it. It was not the first "Windowing" system at all either. The word is much older than Microsoft Windows as Microsoft did not invent the concept and did not use a new word to describe it.

Of course, since has as been pointed out, Microsoft lost their trademark over the generic Windows term, it is very bad example to back up your "Apple does no wrong" hypothesis.

Now, that being said, App Store. Ok, if you agree with Apple, you then agree that these trademarks could also be registered :

Shoe Store
Music Store
Pet Store
Clothes Store
Grocery Store
Hamburger Restaurant
Gas Station

Unfortunately, anyone here that agrees with Apple is doing only because it's Apple. If McDonald's tried to register the "Hamburger Restaurant" trademark, no person in their right mind would agree.

That sounds like a good list, until you do some digging and discover that there are trademarks that are incredibly similar to a number of those. "The Shoe Shop" for example. There was a local joint near where a friend of mine moved called "The Music Store", and another called "The Corner Burger Joint" All three of those examples are purely descriptive names, and yet all three were trademarked at the time. (I have no idea if the last two are still around or not, since they weren't major chains.) Likewise, there's a place that sells kitchy things called "The Music Box". Guess what the only thing they sold when they first opened was. When I was growing up, I'm pretty sure the place my parents usually took me to get new shoes was actually called "The Shoe Store" (This one is a bit shaky, because I was about 5 at the time, so I might be remembering the name wrong, but I seem to recall that they got bought out by "The Foot Locker" at some point.)

Whether "App Store" is too generic for being a trademark is debatable, but it's certainly not as slam-dunk as you imply. Microsoft isn't being totally unreasonable to make the generic-term claim, but to the best of my knowledge, no one ever referred to a store where you can buy software as an "App Store" prior to Apple's creation of their App Store. It has, since that time, become a widely-used short-hand, but that's not the same thing.

The decision on this could go either way and leave me totally unsurprised.

 

[gnasher729]

Cnet's www.download.com have been using 'mobile apps' and 'web apps' as catagories for a very long time.

Anyone who never heard the term app used before the app store have never worked in the IT industry. Just owning an iPhone does not make you a expert in these matters.

I have heard "application", I have heard it abbreviated as "apps", but I never heard of anything being called an "app store" before the iTunes App Store.

 

[Mr. Gates]

How about we let the world take a vote ?

Seeing as 90% of the computers in the world are Microsoft, I think we all know who wins.

App.......

Like

Gas......


Try to win this argument and have the only "Gas Station" in town.

We all Know "Gas" is short for "Gasoline"

Microsoft has every right.

 

[KnightWRX]

No. The point is that it WAS NOT generic. Trademarks are issued for use in commerce, not personal speech.

So because no one ever used "Shoe Store" I could trademark it and open a line of "Shoe Stores" everywhere and sue Payless Shoes if they dared say they are a "Shoe Store" ?

Sorry, App store is generic, as much as Shoe Store, Grocery Store or Soup Restaurant. It doesn't matter that you're the first one trying to actually register it, the rules are the rules.

That sounds like a good list, until you do some digging and discover that there are trademarks that are incredibly similar to a number of those. "The Shoe Shop" for example. There was a local joint near where a friend of mine moved called "The Music Store", and another called "The Corner Burger Joint" All three of those examples are purely descriptive names, and yet all three were trademarked at the time.

You'd have a point if Apple were trying to call it "The App Store" and trademark that. They aren't.

If McDonalds was the first to try and trademark "Burger Joint" or "Burger Place", I wouldn't have a problem with that.

Being first or 12th does not remove the genericity rule.

For your "Hamburger Restaurant" restaurant analogy to hold up, Apple would have to be trying to trademark "Application Store", which obviously isn't the case.

Abbreviations aren't less generic than the full word. "Burger Restaurant" is not any better because it's abbreviated.

 

[001]

You do realize that as far as trademarks go, GUI elements called "windows" and an OS called "Windows" are two totally separate things???

Otherwise, Microsoft could claim Apple is violating their trademark by having a "Window" menu. But they are not referring to the same thing. The Window menu is referring to GUI window elements. Microsoft is referring to an OS named Windows. Apple could certainly name their OS "Icon" and probably trademark it as a NAME FOR AN OS.

You were claiming that the term windows is generic in a domestic sense but not within the computer industry.

I was pointing out that windows are generic within the computer industry, in use at PARC since 1973, 11 years before MS Windows.

 

[John.B]

So you mean adding a generic term to "App" makes it ok? So I could file for "App Help" or "App Info" or "App Update"? How about "Comic book store" or "Vegetable market"?

That's exactly what we're saying. You could trademark "Veggie Market" if you were the first to try to do it. Heck, Seven-Eleven trademarked two numbers!

Is that true? They have "Windows" on this page: http://www.microsoft.com/about/legal/en/us/IntellectualProperty/Trademarks/EN-US.aspx

I distinct remember Microsoft lost initially on the "Windows" trademark, then won on appeal. Mostly on the basis that "everyone knew 'Windows' was Microsoft Windows". Any lawyers know the answer to this?

 

[Snookerman]

Sure. I'm sure you can point to your first to market, ubiquitous and proliferated use of it in mass culture. You can't trademark a idea, only a product. I'm fairly sure M$ can trademark Windows Marketplace and Google, Android Market without others laying claim to use of such. Vegetable market just makes you sound kinda dumb. But go for it. Can you name other official operating App Stores called such or are you trying to protect future companies from having to come up with their own names. Does DirecTV have a trademark on Sunday Ticket. Is having a ticket to a game on Sunday something many people have. But as the name for their one and only NFL contracted football package, I'm fairly sure it is trademarked and whatnot, even though both Sunday and Ticket are ordinary words.

Actually you can't trademark a product, only a name or brand. You can get a patent for the product though. And of course Microsoft can trademark Windows Marketplace and Google can trademark Android Market, because those are specific term. If I say Windows Marketplace, you don't thing of any other app store. However, if I say app store, you don't know which app store I mean since they are all app stores, i.e. stores for apps or places where you can buy an application.

As for "vegetable market", it was supposed to be a dumb example, because I was sarcastic. I know I can't trademark any of the examples I mentioned.

Regarding the DirectTV stuff, I can't really say anything about that because I have never heard of them and have no clue of what they are. But I am suspecting "Sunday Ticket" is not an actual sunday ticket and if someone asks "what is the Sunday Ticket" you don't answer it's a sunday ticket. But, if someone asks what is the App Store you say it's an app store.

 

[KnightWRX]

That's exactly what we're saying. You could trademark "Veggie Market" if you were the first to try to do it. Heck, Seven-Eleven trademarked two numbers!

You don't understand what Generic means in the context of trademarks. Go learn before you try to argue.

 

[guzhogi]

What are you talking about? In this sense App means the same thing, its short for Application. Its not like someone is confusing Cup as in drinking cup and Cup as in measurement.

When I originally made that post, I don't know why, but the other posts just reminded me of it. My thought process is weird like that. Even I don't get it.

But as I thought about it, I thought that just because you may not use a word in a particular way, doesn't mean no one uses it in that way. There are a lot of posts that say they never heard the word "App" or "Application" before Apple used it, while others have. So it might take some research to see if the phrase "App Store" was used by enough people in that sense before Apple made it famous to give Apple the trademark or not.

 

[ferrous]

Soy Milk

... just like I can't use "Soy Milk" as it's a trademark name...

 

[HONDAxACURA]

App=Application...... Don't try to win a battle M$. Besides, didn't Apple use the term apps in their iPhones first? (idk)

 

[KnightWRX]

So it might take some research to see if the phrase "App Store" was used by enough people in that sense before Apple made it famous to give Apple the trademark or not.

Again, being famous, first, etc.. has no bearing on whether something is generic or not. This isn't patents with the prior art clause.

You can't trademark "Grocery Store" as the name for your grocery store. It doesn't matter that you're the first to try or that you made the "grocery store" tag famous. It refers to a category of stores which sell groceries, which can be a lot of different vendors/companies.

No one says you can't try, but then don't expect to get it when people object.

 

[DesmoPilot]

Given that now-a-days app store is quite the generic term (more-so then it was a couple years ago, will also only get more generic as smart phone usage explodes), I don't see how anyone could side with Apple on this.

 

[Snookerman]

How about we let the world take a vote ?

Seeing as 90% of the computers in the world are Microsoft, I think we all know who wins.

App.......

Like

Gas......


Try to win this argument and have the only "Gas Station" in town.

We all Know "Gas" is short for "Gasoline"

Microsoft has every right.

Haha great point!

 

[StuddedLeather]

I actually second this. Although microsoft has a valid point, this isnt the first time this happened and realistically Apple was first one at this game. (not saying apple invented app stores. but they sure perfected the idea first)

"here have a kleenex" obviously im talking about a face whipe. How did you know?!

The reason why I agree with this is because people obviously FORGET what a trademark is for.

Apple doesn't care if people (Microsoft) say "Oh yeah our Windows Market (or whatever their store is called) have some of the best applications (apps) around!" But when you try to say "Oh yeah you can get that App in our App Store" too THEN it becomes a problem. Why? Well before Apple when did Microsoft sell through a store on a mobile device specifically for applications? Never. Exactly. And if they did they should've thought about other companies jumping on their bandwagon and they could've trademarked it.

NO ONE (and you guys know this) was making money (or had this much marketing) off the term "APP STORE" (In the case of the way Apple does it) Did people say it? Mostly likely, but when you make something popular it's rightfully yours to make money off of (That's what trademarks are for - Big Mac Vs Whopper). "Let's get ready to rumble" Sounds pretty common - yet did any other announcers say "Ughh I use to say that too =/"?

It's a competition boys and if people aren't smart enough to protect terms for a specific entity then I feel sorry for them.

And it's not Apple's fault they actually have great marketing. Maybe if Microsoft spent more time creating and not looking at Apple and others they can jump ahead. Lulz yeah right.

 

[Mattie Num Nums]

App=Application...... Don't try to win a battle M$. Besides, didn't Apple use the term apps in their iPhones first? (idk)

No. Palm beat them by about 8 years.

 

[subsonix]

"Office" is not trademarked. Neither is "Word" or "Live", etc.

http://www.microsoft.com/about/legal/en/us/IntellectualProperty/Trademarks/EN-US.aspx

SQL Server on the other hand..

 

[morespce54]

Sometimes I think I should patent the word "patent". I would make billions with that!

 

[cawesjmu]

Wow, this thread is getting long fast.

Now that Apple has released the application "App Store" for the Mac, it could change things. Just like MS has trademarked "Word" as an application.

I think most of the talk is about an "app store" for mobile markets which had been part of the bigger application iTunes.

 

[fxtech]

Sometimes I think I should patent the word "patent". I would make billions with that!

Not really. You can't patent words.

 

[John.B]

Of course, since has as been pointed out, Microsoft lost their trademark over the generic Windows term, it is very bad example to back up your "Apple does no wrong" hypothesis.

http://www.microsoft.com/about/legal/en/us/IntellectualProperty/Trademarks/EN-US.aspx

Microsoft seems to believe 'Windows' (as a standalone noun) is a registered trademark. To back up your "Apple does no right" hypothesis.

 

[cmaier]

Again, being famous, first, etc.. has no bearing on whether something is generic or not. This isn't patents with the prior art clause.

You can't trademark "Grocery Store" as the name for your grocery store. It doesn't matter that you're the first to try or that you made the "grocery store" tag famous. It refers to a category of stores which sell groceries, which can be a lot of different vendors/companies.

No one says you can't try, but then don't expect to get it when people object.

Actually, there ARE special rules for marks that you make "famous," though famous marks can also be subject to genericide.