Apple Defends its APP STORE Mark Against Microsoft's Claim of Genericness
Not surprisingly given the parties involved, the opposition filed by Microsoft to Apple's application to register its APP STORE mark has garnered significant interest.
First, the basic background.
Apple filed an application to register its APP STORE mark in July 2008 in connection with, in part, the following services:
Retail store services featuring computer software provided via the internet and other computer and electronic communication networks; Retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics
In its application, Apple cited three prior registrations for APPLE STORE and THE APPLE STORE (Reg. Nos. 2,424,976, 2,462,798, 2,683,410) in connection with retail store services and online retail store services.
The PTO initially refused registration of the APP STORE mark on the ground that it was merely descriptive in that:
the mark APP STORE merely combines descriptive terms ["APP" defined as a computer application and "STORE" defined as a place where merchandise is offered for sale] without creating a new non-descriptive meaning. The mark would be immediately understood as describing a feature, function, purpose or use of the services, including, retail store services featuring computer applications.
The initial Office Action refusing registration can be found here.
Apple, not surprisingly, disagreed with the PTO's conclusion, arguing that APP STORE was at worst suggestive of the relevant services and even argued that it was "completely arbitrary." As to the latter point, although Apple grudgingly acknowledged that "APP" "may, arguably, sometimes be used as a slang abbreviation for the word 'application,'" it was also an abbreviation for other "app-formative words, such as apparatus, apparent, appendix, applied, appointed, approved and approximate." Thus, when "used in connection with the word 'Store' it is not apparent what the goods or services are," Apple argued, making the mark at least suggestive.
Among other points, Apple also argued that APP STORE created "a clearly recognizable double entendre" that cannot be refused registration on a merely descriptive ground as long as one of its meanings is not merely descriptive. Apple asserted that "in addition to other possible connotations, "APP" and "APP STORE" would be immediately recognized as an abbreviation of the well-known APPLE and APPLE STORE marks, respectively.
Apple's response to the initial Office Action can be found here.
The PTO subsequently made the refusal of registration final, however (final decision found here). Apple filed a request for reconsideration reiterating its previous arguments but also asserting that as an alternative ground, APP STORE was registerable based upon acquired distinctiveness (request found here).
Although the sequence of events are not particularly clear from the PTO's public records, Apple was ultimately successful and APP STORE was published for opposition.
In July 2010, Microsoft filed an opposition to Apple's registration of APP STORE (opposition found here), claiming that it was generic and that Microsoft would be damaged by registration of the mark because it would "discourage or prevent Microsoft and retail stores that sell Microsoft apps from using APP STORE in connection with such services." Apple's answer to the opposition can be found here.
Microsoft then moved for summary judgment in the opposition proceeding before the TTAB, arguing that APP STORE was generic for "retail store services featuring apps" and that registration should therefore be refused.
Microsoft argued that as a general principle, the generic name for a product followed by the word "store" is generic for retail store services featuring that product. "App" is a generic name for software applications, Microsoft argued, and therefore "APP STORE" was generic for retail store services featuring "apps."
Microsoft also contended that "App Store" was commonly used in the trade and by the press and consumers as the name for online stores featuring "apps." Similarly, competitors used "app store" in the names of their stores, Microsoft argued, citing "AppStoreHQ," "Shopify App Store," "@metro App Store," "WinMoAppStore.com" and "DIRECTV App Store." Microsoft also claimed that Apple's CEO Steve Jobs used "app store" to reference competitors' "app stores" in an October 2010 conference call. Microsoft claimed that it "would like the ability to use 'app store' to fairly describe its own retail store services for apps," but that Apple asserted such use was an infringement of its rights, citing demand letters Apple had sent to companies using APP STORE.
Microsoft also asserted the fame of Apple's APP STORE was irrelevant and could not convert the allegedly generic name into a protectable trademark (technically, service mark). Notably, Microsoft appeared to acknowledge the fame and success of Apple's App Store, stating that "Apple was an early and successful entrant into the app store marketplace" and that "[c]ompetitors are rushing to develop smartphone products to compete with Apple's iPhone, and with those products to offer their own app stores."
Microsoft's summary judgment motion can be found here. Microsoft's counsel filed a supporting declaration found here (minus the voluminous exhibits).
In opposition to the motion, Apple claimed Microsoft was "missing the forest for the trees" and was asking the TTAB "to summarily eradicate Apple's commercial rights in its APP STORE mark." Several times in its opposition, Apple made reference to Microsoft's own defense against a "decades-long genericness challenge" to Microsoft's "claimed" WINDOWS mark.
Apple's opposition primarily challenged Microsoft's evidence of genericness, essentially arguing that the evidence was insufficient to establish that a majority of the relevant public use APP STORE as a generic term for the services in connection with which Apple sought registration. In support of its opposition, Apple submitted a declaration (found here) from a "renowned linguist" who assessed use of the term APP STORE in various sources and concluded that the predominant use was "as a proper noun to refer to Apple's online software marketplace."
As to competitors' alleged use of the term "app store," Apple noted that its "principal" competitors had all adopted other terms to refer to their "online software marketplaces." Those other third parties who have made use of APP STORE had for the most part agreed to stop using the name after Apple objected, Apple argued.
One particularly interesting sentence in Apple's opposition stuck out, not because of its relevance to the trademark issue but rather because it implicates a copyright issue recently addressed by the Ninth Circuit in three cases--MDY Industries, LLC v. Blizzard Entertainment, Inc., Vernor v. Autodesk, Inc. and UMG Recordings, Inc. v. Augusto--relating to the first sale doctrine and the distinction between "owners" and "licensees" of, in part, software. Specifically, presumably in support of its argument distinguishing between its APP STORE mark and what it argued is the traditional definition of "store," Apple stated that "[a]ll of the software programs that are available through the APP STORE service are licensed to consumers, not sold." One has to wonder if consumers would agree with this characterization of the transactions if asked. And Apple later referred to the issue again in arguing that "store" is generic for brick-and-mortar retail services but descriptive of online retail web services, noting that "[t]his is particularly the case where the marketplace at issue offers not physical goods such as those offered by the internet retailer Amazon.com, but intangible software licenses."
Apple's (corrected) opposition to Microsoft's summary judgment motion can be found here. Apple also submitted two declarations from its counsel in support of its opposition found here and here.
Microsoft's reply in support of its summary judgment motion can be found here.
Meanwhile, Apple has also instituted an action against Amazon in connection with Amazon's recent launch of the "Amazon Appstore," a point Microsoft raises as further evidence that "app store" is generic. Apple's complaint, filed in the Northern District of California, can be found here.
