Software giant Microsoft will attempt to block Apple from trademarking the words “App Store”, arguing the term is now a generic one that can be used to describe the practices of any number of companies or governments.
The suit highlights the growth of both Apple’s App Store and the applications industry in general, with major manufacturers, including Microsoft, managing app store infrastructure allowing developers to sell their wares online.
“Any secondary meaning or fame Apple has in ‘App Store’ is de facto secondary meaning that cannot convert the generic term ‘app store’ into a protectable trademark,” the firm argues in its summary judgement.
Apple first trademarked the phrase in July 2008, just after the store first launched. At the time, Apple was the only major manufacturer putting significant time and effort into app infrastructure.
Apple’s market is clearly the largest in the world, with over 300,000 apps available and revenue reaching into billions of dollars every year. Much of the marketing surrounding the iPod, iPhone and iPad devices relies on the success of the App Store.
When Apple originally filed for its trademark in California two years ago, it stated that the store contained “retail store services featuring computer software provided via the internet and other computer and electronic communication networks”.
But Microsoft associate general counsel of trademarks Russell Pangborn has said in a statement that the term is far too generic now that everyone has caught up to the iPhone maker.
“An ‘app store’ is an ‘app store.’ Like ‘shoe store’ or ‘toy store,’ it is a generic term that is commonly used by companies, governments, and individuals that offer apps,” he said. “The term ‘app store’ should continue to be available for use by all without fear of reprisal by Apple.”
But instead of using the terms “app store”, other manufacturers are forced to find other titles. Google and Microsoft use the Android Market and Windows Marketplace respectively, while Research In Motion uses the App World and Samsung uses Samsung Apps.
When Apple originally filed for its trademark in California two years ago, it stated that the store contained “retail store services featuring computer software provided via the Internet and other computer and electronic communication networks”.
But in Microsoft’s 23-page motion, in which it argues that not only companies but government departments could use the term “app store” to describe their operations. It also points out that the two terms, “app” and “store”, are incredibly generic.
“These facts alone establish genericness as a matter of law under the cases holding that a generic product name followed by ‘store’ is generic for retail store services featuring the product.”
“App store” is a generic name that Apple should not be permitted to usurp for its exclusive use. Competitors should be free to use “app store” to identify their own stores and the services offered in connection with those stores.”
Apple has previously defended itself in the case, arguing that, “the vastly predominant usage of the expression ‘app store’ in trade press is as a reference to Apple’s extraordinarily well-known APP STORE mark and the services rendered by Apple thereunder”.
Apple’s trademarking is typical among modern tech companies – Facebook has attempted to trademark the word “face”, while Twitter has also trademarked the word “tweet”. Both companies have also attacked others for utilising both words.
Patrick Stafford is a freelance journalist and a former deputy editor of SmartCompany.
