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"Radio" is a somewhat generic term, as is "Shack".

Together, they made something that could be trademarked.

"App Store", prior to iOS was not in use by anyone. Even the term "app" — the file extension for applications on the Mac — was pretty much limited to the Mac platform (the Atari ST platform at one time used .app). The Windows world was still using terms like "exie" or "program".

The term App Store has become pretty common, yes. But it's become so out of the co-opting of the term by Apple's competitors. Apple could have a fairly strong argument that because the term has only been used by competitors, that trademark protection is much needed.

Except RadioShack is not a shack, but the App Store is a store.
 
Lol microsoft fails. Are they going to sue apple for using the name snow leopard also? After all its a generic word for a cat-like animal
 
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.

You just made my day in this thread. This is the point! Especially when you said Best Buy - Circuit City! GREAT EXAMPLE!

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.

Funny but no. Payless is already a trademark for their "shoe store" So no you wouldn't win because Payless wouldn't market their self as just a "Shoe Store".

That's the point here no one marketed their "App Store" as JUST an "App Store" It's generic NOW but so what, eventually it would be mainstream and that's why Apple want to stop others from making money off of it.
 
No it's not, it makes it non generic. The words walk and man doesn't prevent a Walkman™.

Huh? The statement was that "app store" was trademarkable because apple invented the app store (presumably the actual store, not the phrase "app store.") That's entirely irrelevant (and also it's not true).

Further, even if they invented the phrase "app store" and were the first to use it in commerce (possibly true), it still may be generic if the general public uses the phrase to refer to the entire category (of stores that sell applications for mobile devices).

Others seem to be making a different argument, which is also true - a mark may not be suitable for trademark if it is "purely descriptive." So if everyone calls applications on mobile devices "apps," then "app store" may be too purely descriptive to be entitled to protection; this is a separate argument than the generic argument.


You do realize cmaier is a Copyright Attorney and though I may not always agree with him I respect his knowledge in this field.

Patent attorney, actually (though I've dabbled in copyright).
 
It's one of those "inventing the wheel" situations though. Clorox (though maybe it's just me, I always call it bleach, I don't call it Clorox, but I know people that do so I'll give it to you) might be a household name but it's not quite the same thing, it's not a play on an industry standard. It's like the Internal Combustion Engine, the guys at Mercedes Benz who invented it, imagine if they trademarked it, yes they named it first but c'mon, am I supposed to drive a Ford with a "Vroom Vroom" or a Toyota with a "Chug-A-Lug 3000" or a Chevy with an "It works sometimes"? I think it's the same situation here, they have coined a new industry, and in the spirit of open and free commerce, they don't get to name it. Well they do, but they don't get to retain ownership. If they called the the iApp Store, that would be one thing, then Microsoft can call it the Windows App Store, and so on and so forth. But App Store is in a different class than Clorox (which is a brand name, not a product name, your not comparing Apple to Apples)

Basically, Clorox can be Clorox, but they can't trademark Bleach, even though they very well may have been the first ones to call it that! Apple can have an Apple App Store, and they can trademark Apple, but App Store? That's pushing it.

In the end though, it's a fight between the companies, I don't think the consumer will really care. Chances are they will use and stick with one platform, most buy one without researching the other, become an instant fanboy and turn a blind eye to the others (I know an Android guy like that who was convinced the iPhone still didn't have 3G), so he will forever call it the Android Marketplace, he knows what it is, there will be very little gains from calling it the App Store.

-John

There is no new industry here though. The App Store is just an on-line store selling software.

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

They have on-line stores that sell software licenses. Apple calls theirs App Store. Mass Media compares other vender's on-line stores to the App Store. IE, Android Marketplace is Google's [version] of the App Store, Oviis Nokia's version of the App Store, etc... are the names of other on-line stores for specialized software.

Is Apple going to have to lost the trademark of the "The Apple Store" next because BestBuy sells Apples also?
 
Huh? The statement was that "app store" was trademarkable because apple invented the app store (presumably the actual store, not the phrase "app store.") That's entirely irrelevant (and also it's not true).

Further, even if they invented the phrase "app store" and were the first to use it in commerce (possibly true), it still may be generic if the general public uses the phrase to refer to the entire category (of stores that sell applications for mobile devices).

Others seem to be making a different argument, which is also true - a mark may not be suitable for trademark if it is "purely descriptive." So if everyone calls applications on mobile devices "apps," then "app store" may be too purely descriptive to be entitled to protection; this is a separate argument than the generic argument.




Patent attorney, actually (though I've dabbled in copyright).

Well now you're totally irrelevant! :eek:
 
Wrong. Trademarks are allowed for use in commerce. That's the "trade" or "service" part of trademark/servicemark. If I open a store to sell toilet paper and I call it the "TP Store", I can get a trademark in the appropriate retail classification. Doesn't matter in the slightest that the phrase TP has been used for 100 years in some people's personal speech. If it hasn't been used in commerce in that classification, and meets all the other trademark requirements, it's allowable.

Which one is to not be generic. Hence you can't have your "Toilet Paper Store" since many stores exist that sell toilet paper and are thus a "toilet paper store", except they're called Wal*Mart, Target, etc..

Something that seems quite hard to grasp but is rather simple.
 
Another very good reason why noone should have a trademark on the term App store. As the average user only knows that their phone runs apps, apps are fun etc etc, so why should apple have the trademark on this store. How about everyone has a distinct name so there is no confusion. I think its unfair on everyone but Apple users when they hear the term app store and think it relates to Android, win$ etc.

I don't understand your post completely. Parts of it are contradicting. On one part you say that no one should have a trademark on the term App Store, then on another part you say that everyone should have a distinct name to stop confusion. Well isn't that what Apple is doing by trademarking the title "App Store"? I did get your point for the most part but trademarking the term "App Store" does give Apple's store a distinct name and so far that term has become synonymous with Apple's offerings. At this point it would become confusing to the customer if everyone started using the term, henceforth why Apple should be granted the trademark.
 
Well now you're totally irrelevant! :eek:

I am registered with the United States Patent and Trademark Office :) (I am certainly no expert on trademark law, but I did take the class on trademarks in law school, and I keep up on developments in the law in case I end up with a client who needs trademark advice. But the issues here aren't particularly nuanced.)
 
For anyone wishing to actually see the application, I posted a screenshot HERE.

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

Which is it....generic, or does it "imply"? Those are as different as black and white in the context of trademarks.


Also for everyone focusing on the word app alone, it is important to read the elements together....the mark is "App Store". Yes, the element "Store" was required to be disclaimed in the application, however in a determination of where along the spectrum of protectability the mark falls, the mark must be read as a whole. Apple is focusing on "App Store", they are not trying to prevent others from having application stores, as this isn't a software patent dispute. They are only trying to prevent others from referring to those application stores as an "App Store". The distinction seems lost on many of you. Prior to apple's use of "App Store" I am unaware of any senior mark or other use that would prevent apple from protecting the mark. Clearly, such use was not found by the Trademark Examiner. The mark took two years to publish, and likely many office actions back and forth before it was adjudged to either have acquired distinctiveness or to have been adjudged suggestive. Obviously that's not dispositive, or the USPTO wouldn't have established an opposition period procedure, but as far as you trademark experts are concerned, it should carry some decent weight. Of course, the mark could have become generic in the interim, but I believe that Apple is likely to prevail on the point.
 
Funny but no. Payless is already a trademark for their "shoe store" So no you wouldn't win because Payless wouldn't market their self as just a "Shoe Store".

That's the point here no one marketed their "App Store" as JUST an "App Store" It's generic NOW but so what, eventually it would be mainstream and that's why Apple want to stop others from making money off of it.

You failing to understand my analogy doesn't mean "Funny but no".

If I could trademark "Shoe Store" and did, and opened my "Shoe store" locations everywhere, I could very much sue Payless Shoe for saying that their "Payless shoe" locations are "shoe stores", since they wouldn't be "Shoe Stores" (which I would own as a trademark).

Hence why you can't trademark generic terms. You can't trademark "Shoe Store". You can trademark "The Shoe Store" or "Payless Shoe Stores", just not the generic phrase "Shoe Store", unless you're opening a restaurant (which doesn't sell shoes) and call it "Shoe Store", then you can since it's not a generic term then, in the branch of trade you're going for.
 
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.

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

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

Tacking "The" onto a term doesn't make it any more or less generic at term either, yet all those places I mentioned were granted trademarks on exactly what you are arguing is too generic to be trademarked. That's proof right there that you don't have the whole picture figured out quite so well as you think.

"Generic" and "Descriptive" don't mean the same thing in trademarks. If there were a bunch of software stores out there that called themselves "App Stores", that would point to it being a generic term. As it is, there aren't any, and there weren't any before Apple opened their "App Store" either. "App Store" is descriptive. No argument there. It clearly says what it is. That's a good thing in a name, and not necessarily a bad thing in a trademark.

This isn't an open-and-shut case, it could easily go either way. But as ample evidence shows, a purely descriptive name (like "The Shoe Shop") is not *necessarily* a generic term. It certainly can be, but that's why the objection process Microsoft is following exists in the first place.
 
I am registered with the United States Patent and Trademark Office :) (I am certainly no expert on trademark law, but I did take the class on trademarks in law school, and I keep up on developments in the law in case I end up with a client who needs trademark advice. But the issues here aren't particularly nuanced.)

Works for me!
 
Lol microsoft fails. Are they going to sue apple for using the name snow leopard also? After all its a generic word for a cat-like animal

ahh i see what you did there, well played sir! the heated debate in this thread needed a a burst of pure laughter/cola through the nose type post at this moment. you managed it in spades. ;)
 
"Generic" and "Descriptive" don't mean the same thing in trademarks. If there were a bunch of software stores out there that called themselves "App Stores", that would point to it being a generic term. As it is, there aren't any, and there weren't any before Apple opened their "App Store" either. "App Store" is descriptive. No argument there. It clearly says what it is.

Someone gets it :)
 
Handspring/Palm users had an App Store pre-installed on there units. Its been mentioned many times already its called Handango.

You just pretty much summed this up for some.

Their App Store is called Handango - Why would they need to market their "App Store" as anything other than Handango? Oh yeah, so that their users can know they have an "App Store" as well (Like the iPhone, I'm being sarcastic). The fact still remains no one has/had an Application Store, Strictly called "App Store"

If Handango is their app store name, their users would know that's where you go for your apps. If they don't know, well maybe they need better marketing. Apple chose "App Store" I honestly don't see the problem.
 
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