Microsoft Itching for a Fight over Apple’s App Store Trademark

Microsoft is teeing up a legal battle against Apple over the trademark App Store. Microsoft says Apple can’t hold a trademark on the phrase as it is such a common phrase already in use and that any value Apple can claim is essentially secondary. (You can read the complaint here. It’s a downloadable PDF.)

Of course Apple is fighting back. Cupertino contends that the “app” in App Store stands not just for application but is also short for Apple. There’s obviously a lot more than that to this once the lawyers get involved and this will be messy before it even comes close to getting resolved. Todd Bishop has an excellent write-up on this that contains more links to more of the legal stuff that is worth reading if you’re interested in these sorts of things.

9 Comments

  1. Albert

    01/12/2011 at 1:43 pm

    I don’t know how anyone can look at a trademark application like that and not tear it apart while laughing hysterically. The trademarking and copyrighting system is starting to be joke.

    Reply

  2. Sumocat

    01/12/2011 at 2:36 pm

    While both “app” and “store” are generic terms, the combined term “App Store” was introduced by Apple. A search of Google Trends reveals there were no searches for the term until a few months before the App Store launch followed by a jump on launch day. Those few earlier searches are likely attributable to Apple’s searches as they decided on a name. I don’t think the name was in generic use before Apple introduced it, nor does genericization after the fact mean a trademark cannot continue. Kleenex is commonly used as a generic term for facial tissue, but it’s still trademarked.

    Regardless, Microsoft has been using the term “Marketplace” since 2005. It started with XBox Live, was extended to Zune, and is now being carried forward to Windows Phone. How can Apple’s trademark of “App Store” force them to use a term they’d already been using before the App Store launched in 2007? And why would Microsoft mount an argument that would lead to disrupting their own brand association? Sorry, but this is just more inept marketing action from Microsoft.

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  3. GoodThings2Life

    01/12/2011 at 6:16 pm

    I don’t think it’s a complaint against the name so much as what an app store actually is/represents… a centralized store to buy/sell software. If that’s what Apple is trademarking (beyond just the name), then Microsoft clearly has prior art based on the Marketplace, and I’m sure you could cite any number of other companies that could trump Microsoft on it. As such, the concept is a generic concept that can hardly be trademarked without being absurd.

    Reply

    • JeffGr

      01/12/2011 at 6:54 pm

      Trademarks are strictly for names, not for concepts. I don’t know if Apple is pursuing a patent on the idea as well, but the trademark battle is strictly over whether or not Apple gets an exclusive on using “App Store” as a name.

      My instinct is that Microsoft should probably win this one as it generally isn’t permissable (or appropriate) to trademark a descriptive, plain language term. Sumocat’s example of Kleenex isn’t really applicable as that is a word that very clearly started as a brand. I think a more apt comparison would be if they had tried to trademark “Facial Tissue” as their brand name.

      I don’t really see Google search trends as a strong indicator of prior art either. Sure, few people were searching for the term before Apple used it, but that is more of an indication of the popularity of Apple’s store than its uniqueness. There were application stores (Handango for mobile apps comes immediately to mind) before Apple’s and if you accept that “app” is a common abbreviation for “application”, it is hard to see that as anything but a generic term.

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      • Sumocat

        01/12/2011 at 7:15 pm

        Kleenex was an example of genericization of a trademark, not of a trademarked plain language name. Of that, there are many, such as American Airlines, United Parcel Service, United Way, “Just Do It”, etc., etc. Plain language component words is not a barrier to trademark. Microsoft must prove the combined term was in generic use before Apple introduced and trademarked it.

        Reply

        • JeffGr

          01/13/2011 at 5:42 pm

          None of those examples of brand names are simple, descriptive language. A more accurate comparison would be if someone tried to trademark “Passenger Airplane”, “Package Delivery Service”, “Centralized Charitable Organization”. “Just Do It” isn’t even a brand name, but is a slogan with only a very vague relationship to the product (shoes) being sold. Nike’s trademark only protects the phrase under that very specific use.

          Maybe there is an example out there that isn’t coming to mind, but I can’t think of a single example of a successfully trademarked brand name that is nothing more than a description of the product.

          Reply

    • Sumocat

      01/12/2011 at 6:56 pm

      Concepts cannot be trademarked at all. A trademark is literally a mark of trade. It’s a distinct signifier, i.e., name, logo, brand, etc., associated with a product, service or company. It’s been extended to sounds (like the Intel tone) and scents (like perfumes) and shapes, but in all cases, it must be something perceptible. For a concept, one would need to apply for a patent, but that’s not what this is about.

      Reply

  4. Sumocat

    01/12/2011 at 8:10 pm

    Hold on, I’ve figured out the strategy here. Microsoft is attempting to disrupt Apple’s claim on the term before it acquires “secondary meaning”. Secondary Meaning is when a mark is immediately identified with a party by the general public. It allows descriptive names to have full trademark protection (note: registration does not mean full protection, nor is registration necessary for a trademark to be fully protected). However, I’m not sure secondary meaning hasn’t already been established.

    Reply

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