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.