This week’s blog post presents a good illustration of (1) the inconsistency of the Trademark Office, and (2) why I continue to believe that Apple’s APP STORE “trademark” is as generic as the day is long.
If you’ve been diligent about following the world’s greatest trademark blog, you may remember that I wrote an article back in July 2010 about Apple’s attempt to federally register the phrase APP STORE. To refresh your memory, Apple’s trademark application was initially rejected by the Trademark Office on the basis that APP STORE is merely descriptive of an online store that sells software applications. After submitting arguments and an enormous amount of evidence (over 500 pages), the trademark examining attorney responsible for reviewing the application was persuaded that the highly descriptive trademark APP STORE had acquired sufficient distinctiveness and secondary meaning in the minds of consumers to be eligible for federal registration. However, during the publication period, the Microsoft Corporation filed an opposition against Apple’s application on the basis that APP STORE is generic for an online store that offers software applications and, therefore, is legally incapable of identifying and distinguishing Apple’s services from those of its competitors. The opposition between Microsoft and Apple is still pending and, according to the records, Apple has recently requested that an oral argument on Microsoft’s Motion for Summary Judgment be scheduled by the Trademark Trial and Appeal Board. As of today, it does not appear that Apple’s request has been granted.
It is no secret that this trademark attorney agrees with Microsoft’s position that APP STORE is generic. As I argued in my previous post, the use of “app store” in connection with a store that sell apps is no different than the use of “candy store” for a store that sells candy, “pet store” for a store that sells pets, and “grocery store” for a store that sell groceries. I know that all of you out there who idolize Apple are going to scream at me that Apple was the first to use “app store” and that there was no widespread usage of the term “app” or “app store” prior to Apple launching its iTunes App Store back in 2008. While that may be true, there is absolutely no doubt in my mind that the word “app” has become a generic abbreviation for software applications, especially those designed for mobile devices. And, of course, there is no question that “store” is generic for a place (physical or virtual) that sells products.
So, with all that in mind, here is a related (and amusing) tidbit I came across while I was browsing the Trademark Trial and Appeal Board’s records last week. On February 11, 2011 (which is well after the Trademark Office approved Apple’s APP STORE mark for publication), Microsoft filed an intent-to-use trademark application to register the following mark:
The Trademark Office approved Microsoft’s application and it was published for opposition on June 21. Approximately 30 days later, Apple filed an opposition against Microsoft’s application. But why? From just looking at the trademark itself, it’s hard to fathom what has gotten Apple all riled up. Well, it’s actually not Microsoft’s trademark that Apple has a beef with. Rather, it is the identification of products listed in Microsoft’s application that prompted Apple to file the opposition. If you look at Microsoft’s application, you will see that the identification of products reads as follows:
“computer software for accessing app stores and software updates offered therewith; graphical user interface software” (emphasis added)
As the basis for its opposition, Apple cites to a section of the Trademark Manual of Examining Procedure, which states that:
If a trademark or a service mark that is registered to an entity other than the applicant is used in the identification of goods or services, the examining attorney should require that it be deleted and that generic wording be substituted. It is inappropriate to use a registered mark to identify a kind of product or a service, because such a mark indicates origin in only one party and cannot be used to define goods that originate in a party other than the registrant.
Apple concedes in its Notice of Opposition that its APP STORE “trademark” is not yet registered, but that it has been approved for registration by the Trademark Office. I would think that in view of Microsoft’s opposition to Apple’s trademark application for APP STORE, it would be appropriate for the Board to suspend Apple’s opposition to Microsoft’s application pending a decision as to whether APP STORE is generic or not.
So, why do I find this interesting? Well, on the one hand, the Trademark Office determined over a year ago that the descriptive trademark APP STORE acquired secondary meaning and that it was entitled to registration. On the other hand, the Trademark Office allowed Microsoft to include the phrase “app stores” as part of the identification of products listed in its application, apparently finding it to be generic wording. This is especially noteworthy because the trademark examining attorney assigned to Microsoft’s application was not the same person who reviewed Apple’s APP STORE application and was likely unfamiliar with Apple’s APP STORE application and the opposition Microsoft filed against it. The examining attorney (who is trained in trademark law) clearly didn’t think twice about approving Microsoft’s application despite “app stores” being in the description of products. And, let’s face it, what other generic terminology could Microsoft possibly substitute in place of “app stores” in its application? “Stores that sell applications?” “Stores that sell apps?” “Application stores?” In my opinion, the Trademark Office granting a registration for APP STORE would be the equivalent of allowing Banana Republic to claim exclusive rights to “clothing store” and forcing American Eagle Outfitters to advertise itself as a “store that sells clothing.” That would be absolutely nuts and I hope the Board sees right through Apple’s anti-competitive behavior.
So, have I convinced any of you Microsoft haters and Apple lovers that APP STORE is as generic as “furniture store” and “hardware store?” Drop a comment. I’m prepared for the bashing I’m sure to receive.