An Eye On Apple's 'App Store' Trademark Battle

May, 2011
Law 360 Raines Feldman

Law360, New York (May 19, 2011) -- On July 11, 2008, Apple Inc. launched its App Store service, which allows users of Apple's iPhone, iPod, iPad and iTunes software for computers, to browse for and license a multitude of third-party software. Apple's App Store service is now world famous.

On July 17, 2008, Apple Inc. filed for trademark protection with the U.S. Patent and Trademark Office for the phrase "App Store" in the International Classes relating to Advertising and Business, Telecommunications, and Computers and Scientific Products. On Jan. 5, 2010, after the USPTO had provisionally approved the application, it was published for opposition. Microsoft Corp. has opposed the application and both sides have submitted numerous briefs in support of, and against, the application.

Microsoft has argued that Apple is trying to trademark a common abbreviation for the words "application store," and that Apple should not be allowed to get trademark protection for a phrase that merely describes the product. Microsoft argues that it would be like trying to trademark "Grocery Store" for a grocery store, or "Book Store" for a book store.

Trademarks are not permitted for phrases that are generic, or merely descriptive of the goods or services provided, unless they have acquired secondary meaning. Rather, the strength of a trademark is largely determined by how unique or distinctive it is.

For example, Kleenex is a strong trademark because that word did not exist at all, let alone in relation to facial tissues, until Kleenex invented and branded the word. (Incidentally, Kleenex almost lost protection when everyone started referring to all facial tissues as Kleenex.)

Similarly, the trademark "Apple" for computers and computer services is a very distincti ve, and therefore strong, mark.

It is ironic that a company with one of the classic examples of a nondescriptive, and therefore very strong, protectable trademark, has applied for what appears to be a classic example of a nonprotectable, generic and descriptive trademark.

However, Apple, and its linguistics expert, Dr. Robert Leonard, have taken the position that although the term "App Store" may be descriptive of its application store, it has acquired secondary meaning to the consuming public to mean primarily Apple's application store. This secondary meaning, if it in fact does exist, would allow Apple to trademark the phrase.

Leonard has declared that "the term App Store was not in fact in general use in connection with the distribution of software programs prior to Apple's adoption of the term as a trademark." Furthermore, Apple has spent millions of dollars on various forms of advertising, which Apple contends has resulted in a majority of consumers viewing the term "App Store" as a trademark, not a generic term.

Apple's papers correctly state that "[t]he test for genericness is not whether some portion of the relevant public views the term as generic, but whether the term's primary significance to a substantial majority of the relevant public is a generic term." Apple argues that the relevant public views the phrase "App Store" to refer primarily to Apple's app store.

What Do You Think?

Apple has now brought Inc. into the fray for its Amazon Appstore. On March 18, it filed a lawsuit against Amazon in U.S. district court for trademark infringement. Amazon has taken the same position in that lawsuit as Microsoft has taken with the USPTO - that the term app store is generic and means any store that sells software applications.

Another approach that Apple could have taken, but did not, would have been to question what "App" actually stands for. Is it short for application, or is it short for Apple? Nowhere in Apple's trademark application does the word "application" appear.

If App is short for "Apple," it would carry the same distinctiveness and strength as the Apple trademark. However, it appears that even Apple has conceded that App is short for application, and therefore must make the more nuanced arguments regarding public perception that it has made.

The issue is now out of the hands of both Apple and Microsoft and in the hands of the USPTO and, down the road, possibly the Federal Circuit Court. Any determination will be made based on the opinions of the consuming public, including you.

--By Randal Ivor-Smith, Raines Feldman LLP

Randal Ivor-Smith is an attorney in Raines Feldman's Beverly Hills, Calif., office.

The opinions expressed are those of the author and do not necessarily reflect the views of the firm, its clients, or Portfolio Media, publisher of Law360. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

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