Trademark Attorney Morris Turek

Morris E. Turek

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Apple Attempts to Register APP STORE as Trademark. Microsoft Attempts to Stop the Madness.

For those of you who have read some of my previous blog posts, you already know of my love-hate relationship with Apple.  Well, the following story has tipped the scales more towards hate.  On July 17, 2008, Apple applied to register APP STORE as a trademark for “retail store services featuring computer software provided via the internet and other computer and electronic communication networks” and “retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics” (Serial No. 77525433).  After reviewing the application, the Trademark Examining Attorney assigned to the application refused registration of APP STORE on the basis that the mark is merely descriptive of the services rendered by Apple.  The Trademark Examining Attorney specifically noted that the term “app” is “defined as a computer application” and that the definition of the word “store” is “a place where merchandise is offered for retail sale to customers.”  The Trademark Examining Attorney concluded that the combination of those two descriptive terms did not create any “new non-descriptive meaning” and would be “immediately understood as describing a feature, function, purpose or use” of Apple’s retail store services featuring computer software.  Sounds right to me.

In its response to the Trademark Office’s rejection, Apple halfheartedly argued that (1) the word “app” is not merely descriptive because it could be an abbreviation for words other than “application,” such as “apparatus,” “appendix,” and “appointed,” and (2) the word “store” is not merely descriptive because the iTunes App Store is not a traditional brick-and-mortar store or online retail store.  Finally, Apple rather humorously argued that its APP STORE mark “creates a clearly recognizable double entendre” in that APP would “be immediately recognized as a variant of the applicant’s well-known APPLE STORE mark.”  Yeah, right.  “App” is short for “apple.”  Give me a break.  Nobody knows or refers to Apple as “app.”  Not a single person.

After the Trademark Examining Attorney was done cracking up at Apple’s ridiculous and nonsensical arguments, he issued a final refusal to Apple consisting of approximately 145 pieces of internet evidence tending to show that APP STORE would be perceived by the general public as merely a place to purchase software applications.  End of story, right?  Apple waves the proverbial white flag.

Unfortunately not.  Instead, Apple filed a Request For Reconsideration, admitting that APP STORE is, in fact, merely descriptive but that the mark is entitled to registration anyway because it has acquired distinctiveness and secondary meaning.  In other words, Apple argued that the general public would recognize APP STORE as belonging to Apple (and only Apple) because of the extraordinary success of the iTunes App Store, its extensive marketing and promotion of the APP STORE mark, and the unsolicited media coverage of Apple’s services.  In support of its argument, Apple attached a whopping 400 pages of exhibits, including sales figures, advertisements, and media articles.  And you know what?  The Trademark Examining Attorney was actually persuaded by all of Apple’s evidence (or more likely didn’t feel like looking through all of it) and allowed Apple’s application for APP STORE to be published for opposition.

Well, apparently Microsoft was paying close attention to Apple’s APP STORE trademark application because on July 6, 2010, it filed an opposition against the application on the basis that APP STORE is generic for a store that sells software applications and, therefore, is legally incapable of identifying and distinguishing Apple’s services from those of its competitors.  Microsoft specifically attached evidence to its Notice of Opposition indicating extensive third-party use of “app store” in connection with their own services, media articles generically referring to “app store” as a place to purchase applications, dictionary definitions of the words “app” and “store,” and even statements on Apple’s own website in which Apple refers to “apps” in the generic sense.  I also note that I’ve personally never seen Apple use a “TM” next to APP STORE, which you might expect if Apple truly believed it could claim exclusive rights to the phrase.

I could not agree more with Microsoft’s position and, honestly, I think every software application provider should be thanking Microsoft profusely for taking a stand against Apple’s anti-competitive behavior.  I mean, let’s say that I owned and operated a pet store and I decided to not-so-creatively name it PET STORE.  I spend 500 billion dollars over 30 years advertising and marketing my services, and I am known as the best pet store in the world, and my pet store does 100 billion dollars worth of sales each year, and my pet store is featured in thousands of newspapers, magazines, trade journals, and my pet store is written about on thousands of websites, and my pet store is the biggest in the United States.  Guess what?  I still don’t have a trademark!  The fact is that a generic phrase like “pet store” can never become a trademark under any set of circumstances for a store that sells pets, just like “candy store” can never become a trademark for a store that sells candy, “grocery store” can never function as a trademark for a store that sells groceries, and “app store” can never become a trademark for a store that sells apps.  These types of phrases are freely available to any business that wants to use them.

Hopefully, the Trademark Trial and Appeal Board will see right through Apple’s smoke-and-mirror arguments and deny it the monopoly it seeks.  Of course, if you disagree, please feel free to drop a comment.

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9 Responses to Apple Attempts to Register APP STORE as Trademark. Microsoft Attempts to Stop the Madness.

  1. RM says:

    Nice write up, Morris. Any update on this this?

  2. Jon says:

    Can you name any app stores that existed prior to the App Store? Can you even name the widespread usage of the term “app” prior to 2008? The problem is that you are under the false assumption that the term “app store” was generic – it never was, and it still isn’t. The term “application store” is generic, but “app store” has only been used by Apple.

    With all due respect your pet store analogy is weak because pet is a real word; app, by contrast, did not enter the public lexicon until Apple used it in reference to the iPhone and the App Store. Furthermore, if the persons who invented the first grocery store centuries ago had the foresight or the ability to trademark the term they might well have been granted the trademark.

    Every other smartphone provider has made a concerted effort not to use the term “app store”, acknowledging that Apple has de facto ownership over the term. Furthermore, the fact that Steve Jobs made reference to other app stores is relatively meaningless for two reasons: 1) his words could be understood to use the term app store as a reference to the fact that other smart phones are copying Apple’s idea, and 2) he does not solely represent the publicly traded company.

    To my mind Apple’s claim is no different than Facebook trademarking the term facebook. Facebook is not a unique term – it refers to a literal book of faces with contact information used in colleges in the United States in the 1990s and early 2000s. Facebook in terms of a social network is understood to refer to one company. This is, of course, the basis of Facebook’s claim to “book” and “face” trademarks for social networks, as well.

    The term “App Store” is understood to refer to one company in the smart phone marketplace space. Whether or not it implies a generic “application storefront” is irrelevant because “app store” was not a generic term, and it is still not a generic term. It is widely understood to refer solely to Apple’s product. That’s the basis of the claim and likewise why it ought to be granted.

  3. Tony Valentino says:

    Here we go, copy and paste all over again.
    Microsoft, a company that used a $50,000 purchase of DOS (under false pretenses)
    as a springboard to bullying it’s way to a monopoly in desktop operating systems.

    Because of the ascendency and innovations of Google and Apple, Microsoft finds
    itself in a position where it can’t bully, litigate, or spend it’s way into relevancy in
    the current mobile technology revolution.

    Microsoft as a company will have to shrink at least by one third.
    Because of the IPad, ( which they are a year behind in trying to copy),
    along with cloud computing, Windows and Office sales will plummet.

    Senior product, and device managers are leaving the company in droves.
    Better to leave now and cash in the stock options while they still have some value.

    Let’s say since they lawyered up on this app store issue they win.
    Now what?
    You don’t even have a tablet, a willing developer ecosystem to develop apps for it,
    or the new Windows Phone 7.

    For all their hubris, bullying and il – gotten gain over the last 30 years
    Microsoft is finished, and they were beaten on merit by the innovations of Apple and Google.

    No calvary of lawyers, or motorcade of Brinks trucks can save them this time.

    SENT FROM MY IPAD (LOL……..)

  4. Bolt says:

    Anyone on the web over the last decade understands that Apple introduced iLife and iWork k and these apps were called iApps. I used to buy software at computer stores, not an app store. So who are you kidding with your legal babble. Apple received a trademark for iPhone. Didn’t the word Phone exist before? So it’s your personal opinion that doesn’t like what Apple is doing and that’s your problem. The “App Store” represents what Apple has been doing for a decade and it’s their phraseology. Get over it.

  5. Morris Turek says:

    I appreciate everyone’s opinions on this matter. But, I still think that at the end of the day, Microsoft is going to prevail. There is no question that “app” is a generic abbreviation for “application” and that “store” is the generic term for where products and services are sold. People nowadays use the term “app” to refer to any and all applications (especially for mobile devices), not just the ones distributed by Apple. Perhaps “app” was not generic back in 2007 but, in my opinion, it is now. Again, I think my analogy of “pet store” to “app store” is right on point. Pet stores sell pets. App stores sell apps. Just like grocery stores sell groceries and furniture stores sell furniture.

    Anyway, I look forward to seeing the outcome of this case. It may be a couple of years though.

  6. Brian Wilson says:

    My argument is: If Apple believed it owned the word App, then why doesn’t the iPhone automatically change the spelling of the word from app to App like it does with the words iPhone, iPod, and iPad? (as opposed to iphone, ipod, and ipad). This is true when typing in Facebook or sending a message right from the iPhone. Seems to me, if they felt ownership, then why not the “force spell check”?

  7. Brian Wilson says:

    App Store is as generic as Smart Phone

  8. Bob Seager says:

    In reply to Jon’s question of Jan 12 above:

    “Can you even name the widespread usage of the term app before 2008?”

    Yes, “app” has been a generic term for years. Here’s one example (of many)… This one actually fairly popular:

    http://portableapps.com/node/200

    Note the 2005 date.

  9. Bob Seager says:

    @Jon

    Although my previous comment invalidates your assumption – and your arguments dependent on that assumption – that ‘app’ wasn’t a generic term (it clearly was), I thought I’d comment on your other points as well.

    – Others (not ‘Every other’) haven’t used the term pending the outcome of the dispute. It’s not a de facto acknowledgement
    – I kind of agree with your point that Jobs could reasonably refer to other app stores using the lingo of his own organization, however…
    – Steve Jobs doesn’t represent Apple?!!? you’re not serious!

    @ Tony Valentino: ho hum, just another troll from another Apple fanboy/Microsoft hater

    @Bolt: Flawed logic. Are you saying that because Apple used iLife and iWork that they now also own Life and Work? Note that the issue isn’t that Apple wants the term iApp, but App… 2 completely different terms

    @Morris Turek: Completely agree on the equivalency of store for pets and store for apps.

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