UPDATE: Apple v. Amazon, Apple Denied Preliminary Injunction Over APP STORE Mark
As previously reported, in March 2011, Apple sued Amazon in federal court in California alleging various trademark related claims in connection with Apple's alleged APP STORE mark and Amazon's "Appstore for Android." Apple's Amended Complaint in the action can be found here.
Apple later moved for a preliminary injunction to stop Amazon's use of Apple's alleged APP STORE mark. After holding a hearing on the motion on June 22, the District Court yesterday denied the motion, concluding that Apple had not shown that it was likely to succeed on the merits of its trademark infringement and dilution claims.
With respect to the trademark infringement claim, one of Amazon's main arguments was that Apple's alleged APP STORE mark was generic for an online store where consumers can obtain apps and therefore was not eligible for trademark protection. On the plus side for Apple, even though the Court found that it had not established a likelihood of success on the merits, it did not adopt Amazon's argument that Apple's mark was generic:
The court assumes without deciding that the "App Store" mark is protectable as a descriptive mark that has arguably acquired secondary meaning. The court does not agree with Amazon that the mark is purely generic, for the reasons argued by Apple, but also does not find that Apple has shown that the mark is suggestive, as there appears to be no need for a leap of imagination to understand what the term means.
Nonetheless, using the multi-factor test applicable in the Ninth Circuit, the Court concluded that, based on the current record, Apple had not established that there was a likelihood of confusion resulting from the parties' respective uses of the APP STORE mark.
Similarly, the Court found that Apple had failed to demonstrate a likelihood of success on its dilution claim.
First, the Court concluded that Apple had not established that its APP STORE mark was famous, despite recognizing that Apple had spent "a great deal of money" on advertising, noting that there was evidence that others used "app store" as a descriptive term for their stores.
Second, the Court found that Apple had failed to demonstrate dilution by "blurring" or "tarnishment."
As to blurring, the Court concluded that
the marks are similar, but "App Store" is more descriptive than it is distinctive. Apple did have substantially exclusive use of "App Store" when it launched its service a little over three years ago, but the term appears to have been used more widely by other companies as time has passed. The mark does appear to enjoy widespread recognition, but it is not clear from the evidence whether it is recognition as a trademark or recognition as a descriptive term. Moreover, there is no evidence that Amazon intended to create an association between its Android apps and Apple's apps, and there is no evidence of actual association.
No luck for Apple on its tarnishment claim either: "Apple speculates that Amazon's App Store will allow inappropriate content, viruses, or malware to enter the market, but it is not clear how that will harm Apple's reputation, since Amazon does not offer apps for Apple devices."
In the end, although the Court's decision does not doom Apple's claims, it may indicate that Apple has a tough row to hoe.
The case cite is Apple, Inc. v. Amazon.com Inc., Case No. CV 11-01327 PJH (N.D. Cal. July 6, 2011).
