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

KnightWRX said:
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.
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Exactly! I can't believe how this can be so hard to understand!

The App Store is an app store.
Pizza Hut is not a pizza hut. It's a restaurant.
Snow Leopard is not a snow leopard. It's an OS.
Target is not a target. It's a store.
RadioShack is not a radio shack. It's a store (or w/e, I'm not sure what it is and idk)
WalkMan is not a walk man. It's a cassette player.
WalMart is not a wal mart. It's a store.
Seven-eleven is not a seven eleven. It's a restaurant.
But, App Store is an app store!

Get it people? The name they are trying to trademark is the description! That is why it's generic.
 
tbrinkma said:
"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.
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So we're saying the same thing, I understand the rules, I might just not know the exact law terminology. But then again, I'm not a lawyer.

I'll just say it's descriptive from now on.
 
iTravis said:
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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I see both sides of this and I see this argument, however! I see this as a very slippery slope.
 
Pocket-PC anyone?

Microsoft copyrighted "pocket-pc". It's the second most used word do describe any handheld computing device right after "palm". At least it was, once. Now they're all iphones and ipads ;)
 
Nothing would prevent Microsoft from calling theirs the Application Store. But the "App Store" certainly has brand recognition. Other players use the term due to it's ability to confuse buyers that they have the/a App Store on their own product. Had Apple not built the identity, others would not be using it. That they have or do, does not make it just.

There are plenty of other generic names that are protected. One right by me is "Home Goods". How much more generic can a store that sells home goods get?

And just because a phrase quickly became generic and widely used, as various companies copy Apple's "App Store", doesn't mean Apple doesn't have legal rights.

A few famous ones have been mentioned already. Others include:

Band-aid
Rollerblade
Digital Technology, Inc (shouldn't they all be able to use that?)

Any TV at 1080p is pretty "Sharp", but you better be careful about slapping that descriptor on the box unless you own the trademark.

And ironically Microcomputer software - Microsoft.

From WiKi:
The process by which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide. This process typically occurs over a period of time where a mark is not used as a trademark (i.e., where it is not used to exclusively identify the products or services of a particular business), where a mark falls into disuse entirely, or where the trademark owner does not enforce its rights.

Right now, I bet if you as 100 people, what comes to mind when I say, "The App Store", I bet the vast majority will associate it with Apple. Just because other companies are trying to mine that common use, like competitors of Velcro did, doesn't mean Apple doesn't have standing. However, if Apple does not attempt to enforce this, than it is surely lost.
 
Mr. Gates said:
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.
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Your argument fails here, know why? As you stated 90% of the world uses computers with Microsoft's system on them, but the portable music players, phones and tablets most of them use are Apple's (including buying from Apple's App Store) so I don't think they will be voting for Microsoft to win. :p
 
Snookerman said:
Exactly! I can't believe how this can be so hard to understand!

The App Store is an app store.
Pizza Hut is not a pizza hut. It's a restaurant.
Snow Leopard is not a snow leopard. It's an OS.
Target is not a target. It's a store.
RadioShack is not a radio shack. It's a store (or w/e, I'm not sure what it is and idk)
WalkMan is not a walk man. It's a cassette player.
WalMart is not a wal mart. It's a store.
Seven-eleven is not a seven eleven. It's a restaurant.
But, App Store is an app store!

Get it people? The name they are trying to trademark is the description! That is why it's generic.
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I'd like to clarify. "The name they are trying to trademark is the description!" But that's not why it's generic. That's a separate problem - a mark that is "merely descriptive" may not be entitled to trademark protection because allowing a monopoly on the use of the term in commerce could be unfair to competition. But that's a different problem than a mark being generic. A mark is generic if it refers (in the eyes of the consuming public) to the genus of which the particular product is a species. A generic mark cannot be a trademark.

A "descriptive" mark conveys an immediate idea of the nature of the goods. It describes the product. A descriptive mark CAN be entitled to trademark protection if it acquires "secondary meaning." In other words, if the purchasing public associates the word or phrase with a particular company or product, even if it's descriptive it can get a trademark. But if it's generic, it cannot.
 
tbrinkma said:
"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.
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Close, but not quite. Absent secondary meaning, descriptiveness is a terrible thing in a trademark because it's just out of reach of protectability. But I don't think it's such a clear cut case, and believe there remain decent arguments for the mark being suggestive. In any event, I believe there is more than enough secondary meaning to support protection. Generally, markholders aim for "suggestive" marks.
 
notabadname said:
From WiKi:
The process by which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide.
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You're confusing 2 issues. What genericide refers to is an "invented" word becoming generic, ie, your band-aid example.

What's a band-aid ? It's purely invented. Yet it become a generic term to describe a sticky gauze that helps shields wounds. This is not the issue we have here.

App was already in use widely in the industry. App Store is a very descriptive term (not generic because this seems to have importance to lawyers) since App exists and App Store describes a place that sells these, exactly what the App Store does.

In one case, you're talking about an invented, trademark term becoming generic. In this case, we're talking about a descriptive phrase trying to get trademarked.

Apple and Oranges.
 
gwest said:
How mac Microsoft object to "App Store" when they own the word "Word"?
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actually, their "word" and "windows" and "office" trademarks are only in relation to their existence as a piece of software.

you can open an online store called "windows" or "office" or "word"

Not "Microsoft Windows" though.

Currently, Apple calls their online store the iTunes App Store.

That entire name, they can trademark and defend.

'app store' is too generic. What they are trying to do is lock down the term so that nobody else can use it in the same context (i.e. an online store), and that's what isn't going to fly.
 
cmaier said:
I'd like to clarify. "The name they are trying to trademark is the description!" But that's not why it's generic. That's a separate problem - a mark that is "merely descriptive" may not be entitled to trademark protection because allowing a monopoly on the use of the term in commerce could be unfair to competition. But that's a different problem than a mark being generic. A mark is generic if it refers (in the eyes of the consuming public) to the genus of which the particular product is a species. A generic mark cannot be a trademark.

A "descriptive" mark conveys an immediate idea of the nature of the goods. It describes the product. A descriptive mark CAN be entitled to trademark protection if it acquires "secondary meaning." In other words, if the purchasing public associates the word or phrase with a particular company or product, even if it's descriptive it can get a trademark. But if it's generic, it cannot.
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And this, right here, is a good explanation of why Apple may well get the "App Store" trademark. And why they may well *not* get it.
 
Word

Snookerman said:
Exactly! I can't believe how this can be so hard to understand!

The App Store is an app store.
Pizza Hut is not a pizza hut. It's a restaurant.
Snow Leopard is not a snow leopard. It's an OS.
Target is not a target. It's a store.
RadioShack is not a radio shack. It's a store (or w/e, I'm not sure what it is and idk)
WalkMan is not a walk man. It's a cassette player.
WalMart is not a wal mart. It's a store.
Seven-eleven is not a seven eleven. It's a restaurant.
But, App Store is an app store!

Get it people? The name they are trying to trademark is the description! That is why it's generic.
Click to expand...

Yes but "App" is not a word. Each of your examples includes recognized words- "App" is not. It's an informal abbreviation that, in of itself, is meaningless.
 
benpatient said:
actually, their "word" and "windows" and "office" trademarks are only in relation to their existence as a piece of software.

you can open an online store called "windows" or "office" or "word"
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Try it. See how long it takes before you get a C & D from Microsoft's legal team.
 
cmaier said:
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).
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I was referring to the phrase, of course there were places where you could buy software. But the example of SQL Server, which is a Microsoft trademark shouldn't be possible to trademark either then. You could argue that it's even more descriptive, since app is a short for application.
 
notabadname said:
Nothing would prevent Microsoft from calling theirs the Application Store. But the "App Store" certainly has brand recognition.
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Because of brand recognition, this is only reason why Microsoft is crying foul on this one. Had Apple's App Store not been successful nobody would've said anything.
Why is it that companies always wait until Apple is successful with something before crying foul on trademarks? Big Fail MS.
 
KnightWRX said:
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.
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No I understood, I just still find this (whole debate) a little humorous. And I do think you can trademark generic terms or phases, if used correctly.

(I still want to make sense of this Shoe Store thing, it's a great example) If you tried to sue Payless you would lose. Why? Well It depends, if Payless tried to market itself as "Shoe Store" or "The Shoe Store", then you might win as that IS your trademark. BUT I'm still asking why would Payless need to say it's a "Shoe Store" isn't that obvious they sell. . . . . .shoes.

You would ONLY be able to sue if Payless SELLING point was (or something like) "Come in to The Shoe Store" or "Payless The Shoe Store" -You get my drift. They would have no reason to say that because they can say Payless Shoes. Everyone else would eventually figure out it's a store that sell shoes.

In the case of Apple - their "Application Store" is called App Store/ The App Store. They've used it in marketing, made it mainstream and that's their selling point.

I really respect Android a little because "Android Market" is great. No one's over there crying about the "App Store".
 
KnightWRX said:
You're confusing 2 issues. What genericide refers to is an "invented" word becoming generic, ie, your band-aid example.

What's a band-aid ? It's purely invented. Yet it become a generic term to describe a sticky gauze that helps shields wounds. This is not the issue we have here.

App was already in use widely in the industry. App Store is a very descriptive term (not generic because this seems to have importance to lawyers) since App exists and App Store describes a place that sells these, exactly what the App Store does.

In one case, you're talking about an invented, trademark term becoming generic. In this case, we're talking about a descriptive phrase trying to get trademarked.

Apple and Oranges.
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No, not confused. Microsoft is claiming that everyone is using the shortened version App for application or software, and therefore, Apple's shortening of a word, Application, has become generic. But, App is not a word, look it up. If Apple were calling their store the "Application Store", then you would be correct. "App Store" has not been used by any other retailer, and prior to Apple, other retailers were not marketing Apps for sale on their products. After Apple's success with the term in their marketing, the competition started marketing that they had "Apps" too. But even then, did not have "The App Store". Just because Apple's coining of "App" quickly became generic through their large investment in advertisement, does not mean that they did not invest in and build the trademark. If "App" were in Webster's, we would have an entirely different animal.
 
In my perfect world Apple loses this case and it brings in to question all trademarked names but in the world we live in today with stores named The Box Shop, The Container Store, The Box Store, and The Storage Store Apple should win this
 
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notabadname said:
No, not confused. Microsoft is claiming that everyone is using the shortened version App for application or software, and therefore, Apple's shortening of a word, Application, has become generic. But, App is not a word, look it up. If Apple were calling their store the "Application Store", then you would be correct. "App Store" has not been used by any other retailer, and prior to Apple, other retailers were not marketing Apps for sale on their products. After Apple's success with the term in their marketing, the competition started marketing that they had "Apps" too. But even then, did not have "The App Store". Just because Apple's coining of "App" quickly became generic through their large investment in advertisement, does not mean that they did not invest in and build the trademark. If "App" were in Webster's, we would have an entirely different animal.
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No you are confusing it.

Just because it is a shorten version of a word that is commonly us to describe Applications (aka App) means it is generic.

App is generic and App store is Generic.... It does not need to be in the Websters to not be generic. Also under how a word is created App is a word. Just because Webster's has not updated it yet does not make it any less of a word.
 
notabadname said:
No, not confused. Microsoft is claiming that everyone is using the shortened version App for application or software, and therefore, Apple's shortening of a word, Application, has become generic.
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Wait, how is that wrong ? App has been an abbreviation of Application since forever. And how is this even the issue ? Microsoft is opposed to not just the "app" portion.

jimmy75 said:
but in the world we live in today with stores named The Running Store Apple should win this
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The running Store ? Are you refering to a Store that sells "running" (which is not even a noun, much less a product) ?

And since "The Running Store" doesn't actually exist (are you thinking of the Running Room ? or Runner's Corner ?), that says a lot for your argument.
 
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