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

[crazy dave]

Prior art is a patent thing, not a trademark thing. It's not because no one used "Shoe Store" before in a commercial setting to talk about their store that sells shoes that you can trademark "Shoe Store". App Stores are a dime a dozen and are a category of stores, stores that happen to sell apps as abbreviated for applications.

Anyway, seeing how the USPTO initially denied Apple and only came to the objection phase after Apple badgered them, I don't see how they'll get the trademark granted after this high profile objection to it. It seems the deck is stacked against them and rightly so. "Mac App Store", "iTunes App Store", go for it, but I can't really approve of them trying to trademark "App Store", just like I wouldn't approve of 7-eleven trademarking and renaming their stores "Convenience Store".

I wasn't arguing about prior art. My argument was this: after all Xerox became synonymous with the whole class of product, so did Kleenex and Plexiglass. And each company did have a fight over trademarks because of that. However, they won because 1) they all launched marketing campaigns to re-promote the generic title that existed before them and 2) it was after all associated with their product and their product only before the product became such a huge success that the name of the product became generic.

I do agree that simply coining a phrase does not make you owner of it. My argument is whether the "App Store" first became a thing associated only with Apple and which then became a success and people began to use it generically (ala Xerox) or if Apple took a generic name and is now trying to associate only to them and their product. That's the relevant argument.

However, the USTPO did authorize their claim, this is an appeal of that decision. I'm not sure it is fair to claim that Apple any more badgered them by appealing than Microsoft is by appealing.

 

[unknownart]

Hahahaha, Kenmore is a Sears brand. Sears and K-Mart are only recently the same company. K-Mart wouldn't have used a Sears brand to come up with their name. K-Mart most likely came from the founder's name...Kresge.

and

Kresge, at one time a chain of 5 and 10 cent stores.

Thanks.

 

[baddj]

I think Microsoft has a very good point as the words "App Store" is generic.

It would be like if someone patent the word "web site".

And this is why i am starting to not like apple they want to own/control everything.

 

[unknownart]

I wasn't arguing about prior art. My argument was this: after all Xerox became synonymous with the whole class of product, so did Kleenex and Plexiglass. And each company did have a fight over trademarks because of that. However, they won because 1) they all launched marketing campaigns to re-promote the generic title that existed before them and 2) it was after all associated with their product and their product only before the product became such a huge success that the name of the product became generic.

I do agree that simply coining a phrase does not make you owner of it. My argument is whether the "App Store" first became a thing associated only with Apple and which then became a success and people began to use it generically (ala Xerox) or if Apple took a generic name and is now trying to associate only to them and their product. That's the relevant argument.

WAS there something called an "app store" (both words) before Apple started using it?

 

[mKTank]

Again mostly irrelevant arguments. "Internet Explorer" is descriptive of what it does, is very close in meaning to the generic name web browser, but it isn't that name - so it's okay. Descriptive names are trademark-able.

No. "Internet Browser" is generic. "Internet Explorer" is not. And also, I believe that it is "Microsoft Internet Explorer."

The issue is whether or not "App Store" is something tied to Apple or does it refer to the general class. The origins of app and store are irrelevant (therefore so are any argument claiming Apple invented app too).

Apple called their product "App Store" - the issue is at the time was that already a name associated with the general class of products or was that something specific to Apple and is it so now?

Honestly I'm no sure what is more important - the now or at the time - it seems like the latter should be more important and therefor Apple has a pretty strong case since there were very few stores selling mobile apps and the idea hadn't really quite caught on. Therefore there wasn't a generic name to call it and therefore it is simply them being a victim of their own success that everyone thinks of them now as app stores. However, most companies have also had to defend from the "now" - like Xerox, Plexiglass, etc ... by the time their patents had been approved Xerox started to try to refer to people photocopying things since Xerox had been so successful that Xerox was becoming associated with the general class of product.

This isn't really an argument so I don't know how to answer it. But yeah I'm right, you're wrong.

 

[crazy dave]

Uh oh, we've created an irrelevancy chain

By the way, dibs on trademarking "irrelevancy chain"!

 

[mrochester]

P.S. Your argument is also flawed in another respect: Browser is description of the action taken (or more accurately the person/thing who is doing the browsing) - it is exactly analogous in every respect to the word Explorer a description of the action or more accurately to the person/thing doing the exploration.

My point is that 'Internet Explorer' is perfectly fine as a trademark. Firefox isn't an 'internet explorer', it's a 'web browser'. Safari isn't an 'internet explorer', it's a 'web browser'.

However, again this counter argument is irrelevant since the original argument was irrelevant. Descriptive names are viably trademarked as long as they have become associated completely with the company and the product and not a generic name.

Yeah, but unfortunately for Apple, app store is now a generic term for a place where you go to buy applications for your mobile device/whatever. Therefore they shouldn't be able to trademark it.

I wasn't arguing about prior art. My argument was this: after all Xerox became synonymous with the whole class of product, so did Kleenex and Plexiglass. And each company did have a fight over trademarks because of that. However, they won because 1) they all launched marketing campaigns to re-promote the generic title that existed before them and 2) it was after all associated with their product and their product only before the product became such a huge success that the name of the product became generic.

I do agree that simply coining a phrase does not make you owner of it. My argument is whether the "App Store" first became a thing associated only with Apple and which then became a success and people began to use it generically (ala Xerox) or if Apple took a generic name and is now trying to associate only to them and their product. That's the relevant argument.

I think this is irrelevent. Xerox, Kleenex and Plexiglass only tell you what brand of thing an item is, not what the thing is itself. If people choose to use that in everyday language to mean a certain thing, that simply highlights the success of the product and marketting of that brand. 'App Store' is a generic name for a place where applications can be purchased. It doesn't in any way indicate any specific brand or company, and shouldn't be used as such. Like I said, all Apple need to do is stick a qualifier in the name to indicate whose app store it is.

 

[blackpond]

WAS there something called an "app store" (both words) before Apple started using it?

The only thing filed at the USPTO is the Apple "App Store" filing in July of 2008.

http://tess2.uspto.gov/bin/gate.exe?f=doc&state=4005:6ulsuf.3.3

Which is a live mark now, btw.

 

[KnightWRX]

I wasn't arguing about prior art. My argument was this: after all Xerox became synonymous with the whole class of product, so did Kleenex and Plexiglass. And each company did have a fight over trademarks because of that. However, they won because ...

Because they invented these names, out of the Ether. Kleenex is the company and product. Their popularity transformed the real product category name, "Tissue", into Kleenex for the common folk.

You're talking about the opposite situation, a company invented brand becoming generic enough that people start calling other brands of the same product by that specific brand.

This is not what is happening here. Apple did not invent "App Store", just like 7-eleven did not invent "Convenience Store". Those are categories, descriptive terms to describe exactly what the purpose of the brand is. Apps, applications were around before and you sell these in a store. App Store. Shoe Store.

Don't go confusing things now. Your Kleenex, Xerox, Clorox whatever examples don't apply. They would if Microsoft was trying to say "iPod" could not be trademarked because it has become synonymous with MP3 Player and people refer to all brands of MP3 Players as iPods. This isn't what is happening here. Apple is trying to trademark "Shoe Store" as a name for their store that sells shoes essentially.

WAS there something called an "app store" (both words) before Apple started using it?

First, drop the color, seriously annoying.

For your comment : Irrelevant. Just because no one tried to trademark "Grocery Store" and used "Grocery Store" for their grocery store before doesn't mean I can come in tomorrow and trademark it.

A lot of you people seem to be under the impression that if Apple is denied this trademark, they would have to change the name of the App Store. They won't. It's not because they don't hold a trademark that they can't use the name. Let it go boys, Apple ain't always right.

 

[AidenShaw]

Sorry but isn't App a made up word(by shortening application) that Apple have been using first?

Shortened yes, Apple first - no.

Look up "Oracle Apps" for any year in the last decade of the last millenium.

"Apps" has been common shorthand for "applications" since long before Apple Computer turned into Apple Consumer Electronics.

 

[Mattie Num Nums]

Shortened yes, Apple first - no.

Look up "Oracle Apps" for any year in the last decade of the last millenium.

"Apps" has been common shorthand for "applications" since long before Apple Computer turned into Apple Consumer Electronics.

Oracle, Citrix, Microsoft, have all used App prior to Apple using it in context to the App Store.

 

[Rodimus Prime]

WAS there something called an "app store" (both words) before Apple started using it?

Completely irrelevant. So that argument does not matter.

Look thew this. Apple LOST the first time and Apple appealed it. It was grant tentively and was open to people opposing it. MS was one that opposed it. Other I bet wanted to but do not have deep enough pockets to fight Apple on it.

 

[KnightWRX]

Shortened yes, Apple first - no.

Look up "Oracle Apps" for any year in the last decade of the last millenium.

"Apps" has been common shorthand for "applications" since long before Apple Computer turned into Apple Consumer Electronics.

Next they'll be telling us Docs is a Microsoft invention because it is the file extension for Word documents.

I've never actually seen a word not get abbreviated before, humans are so lazy when it comes to vocabulary. It's a wonder all these people "have never heard App used before Apple used it!", must be a bunch of people outside the industry, the word App has been around since I've started using computers back in the 80s.

 

[crazy dave]

No. "Internet Browser" is generic. "Internet Explorer" is not. And also, I believe that it is "Microsoft Internet Explorer."

Yes that's the point: the use of browser versus explorer. The generic name could have easily been explorer, but it isn't. Therefore Explorer is okay to use. Microsoft had every right to trademark it. However, the original argument was: can a descriptive name be trademarked? YES it can. Microsoft's browser is trademarked as Internet Explorer.

This isn't really an argument so I don't know how to answer it. But yeah I'm right, you're wrong.

hmmm ... uh it actually is an argument, please read again (okay the last part was me thinking out lout, but the first two parts are an argument) ... simply saying you're right and I'm wrong is not an argument.

What I as trying to convey to use is that descriptiveness of the name is not important. Only what that name is associated with. Please read Microsoft's appeal reasons. They argue that the secondary meaning of "App Store" does not apply to Apple but to the generic class. All other arguments - including but not exclusively: "app was/was not invented by Apple" and "App Store is descriptive" - besides what the name is associated with and why are frankly irrelevant to the discussion at hand.

I am also not saying that Microsoft doesn't have a case - they do - a very good one. But I think Apple also has a case and I think they will still win. However, as I wrote before it would not be a huge injustice if Apple lost.

 

[unknownart]

According to the United States Patent and Trademark Office the mark is already live and filed originally on July 17, 2008.

http://tess2.uspto.gov/bin/gate.exe?f=doc&state=4005:6ulsuf.3.3

Yeah, thatsa what Microsoft is trying to shoot down and/or reverse.

 

[unknownart]

Next they'll be telling us Docs is a Microsoft invention because it is the file extension for Word documents.

I've never actually seen a word not get abbreviated before, humans are so lazy when it comes to vocabulary. It's a wonder all these people "have never heard App used before Apple used it!", must be a bunch of people outside the industry, the word App has been around since I've started using computers back in the 80s.

What about "app store" ?

 

[KnightWRX]

Again, stop with the color. Highly annoying.

Yeah, thatsa what Microsoft is trying to shoot down and/or reverse.

Live doesn't mean it's granted. It just means it isn't dead. Which would be weird if it was dead before the mark was either granted or denied. The USPTO is in the opposite phase of the grant process right now, which is why Microsoft filed their opposition paper. When it all gets reviewed, Apple will either get their claim for the mark denied or granted based on the USPTO's decision.

No one is trying to reverse anything.

What about "app store" ?

What about it ?

 

[Avalontor]

What about "app store" ?

obvious troll is obvious

 

[unknownart]

Completely irrelevant. So that argument does not matter.

Look thew this. Apple LOST the first time and Apple appealed it. It was grant tentively and was open to people opposing it. MS was one that opposed it. Other I bet wanted to but do not have deep enough pockets to fight Apple on it.

Nope. You are wrong.
It is not irrelevant.

An app is an app, but an app store is different. Or should I say, "an app store® is different."

And, btw, sometimes that's how establishing trademarks work. You keep appealing for a judgement in your favor.

 

[Mattie Num Nums]

What about "app store" ?

So can I trademark "Apple Inc Store" since its different from Apple Inc? Or can I trademark "Microsoft Office Stuff" since its not "Microsoft Office"?

 

[crazy dave]

My point is that 'Internet Explorer' is perfectly fine as a trademark. Firefox isn't an 'internet explorer', it's a 'web browser'. Safari isn't an 'internet explorer', it's a 'web browser'.

Yes and I completely agree. I never said it wasn't a viable trademark. In fact I emphatically stated over and over again that it was acceptable. The original argument made was that "App Store" was too descriptive. That's irrelevant. "Internet Explorer" was the example given as to why a descriptive title is an acceptable trademark because it is not the generic name.

Yeah, but unfortunately for Apple, app store is now a generic term for a place where you go to buy applications for your mobile device/whatever. Therefore they shouldn't be able to trademark it.



I think this is irrelevent. Xerox, Kleenex and Plexiglass only tell you what brand of thing an item is, not what the thing is itself. If people choose to use that in everyday language to mean a certain thing, that simply highlights the success of the product and marketting of that brand. 'App Store' is a generic name for a place where applications can be purchased. It doesn't in any way indicate any specific brand or company, and shouldn't be used as such. Like I said, all Apple need to do is stick a qualifier in the name to indicate whose app store it is.

That's a much better argument and completely relevant, but actually they each run counter to each other: is "App Store" generic name only because it was associated with Apple and Apple was successful (like Xerox) or because it was a generic name that Apple is trying to appropriate for themselves simply by claiming to popularizing it (i.e. it was a generic name name that few people knew about and know it s a generic name that everyone knows about, but it was never tightly linked to Apple as a brand)? Apple's case is the first, Microsoft's case is the latter. Who you believe has the more reasonable argument affects who you think will win.

I think each side has a case and that Apple may very well win it. But again, like I've said if Microsoft won, I wouldn't view it as some kind of injustice. I think they both have merit.

 

[crazy dave]

So can I trademark "Apple Inc Store" since its different from Apple Inc? Or can I trademark "Microsoft Office Stuff" since its not "Microsoft Office"?

I know you're being sarcastic, but no and that's also not the issue. Those would be interfering trademarks. This is the generic vs specific name.

 

[Snookerman]

What about "app store" ?

You can add the word "store" to pretty much anything that is sellable. That doesn't give you the right to trademark it. If I start selling empty milk cartons, and name my company/website/shop "Empty Milk Cartons Store" and then other companies realize they could also sell empty milk cartons because it's profitable nowadays, I can't just trademark "Empty Milk Cartons Store" because I was first to put those words together.

P.S. I love ridiculous examples

 

[crazy dave]

Because they invented these names, out of the Ether. Kleenex is the company and product. Their popularity transformed the real product category name, "Tissue", into Kleenex for the common folk.

You're talking about the opposite situation, a company invented brand becoming generic enough that people start calling other brands of the same product by that specific brand.

This is not what is happening here. Apple did not invent "App Store", just like 7-eleven did not invent "Convenience Store". Those are categories, descriptive terms to describe exactly what the purpose of the brand is. Apps, applications were around before and you sell these in a store. App Store. Shoe Store.

Don't go confusing things now. Your Kleenex, Xerox, Clorox whatever examples don't apply. They would if Microsoft was trying to say "iPod" could not be trademarked because it has become synonymous with MP3 Player and people refer to all brands of MP3 Players as iPods. This isn't what is happening here. Apple is trying to trademark "Shoe Store" as a name for their store that sells shoes essentially.

A lot of you people seem to be under the impression that if Apple is denied this trademark, they would have to change the name of the App Store. They won't. It's not because they don't hold a trademark that they can't use the name. Let it go boys, Apple ain't always right.

They aren't always wrong either (I've read your posts before ). I think I addressed most of these points in my response to mrochester. So you can feel free to tear though those. EDIT: one I didn't respond to was your own argument: prior art doesn't apply. It's who/what is the name associated with (a specific company or the generic name) and why that is important.

However, you are right that they don't have to change their name. Also it worth pointing out that a trademark only stops people from using that name in their brand.

Anyway I'm off to a late lunch and hopefully some work.

Enjoy the arguments.

 

[cmaier]

Well I'm not sure how that would work, but doesn't it mean that if Microsoft would want to write something like "check our Marketplace our very own app store for a bunch of great apps", they would have to write "app store®" and then mention that "app store®" is a registered trademark by Apple Inc. or whatever? I would say that is a big deal for a competitor to have to do. But again, I'm not sure that's how it would work.

No easy answer. The test is whether a consumer would be likely to be confused into thinking that Microsoft's "Marketplace" is affiliated with Apple.